Summary
On March 26, 2025, the United States Patent and Trademark Office (USPTO) announced changes to the Patent Trial and Appeal Board (PTAB) trial institution process, creating a new bifurcated approach to institution decisions. The Director will first decide whether to exercise discretion to deny a petition for inter partes reviews (IPR) or post-grant reviews (PGR)—considering, among other things, workload needs at the PTAB—and if a petition passes this stage, it will then move forward to a traditional merits decision on institution.
The Upshot
- Patent owners now may submit a brief exclusively on discretionary denial issues, and the petitioner will have an opportunity to respond.
- The Director will then decide whether to exercise discretion to deny the petition, taking into consideration the PTAB’s workload.
- Recent reports suggest that the PTAB workforce has already been reduced, and more reductions are expected.
- If the petition passes this stage, it will move forward to a traditional merits decision on institution.
The Bottom Line
Under the new procedures, a patent owner can submit a brief on discretionary denial within two months of the PTAB's notice, with the petitioner having one month to respond, while the traditional merits briefing schedule remains unchanged. Attorneys in our Intellectual Property Group can evaluate and advise on how to navigate this new process.
On March 26, 2025, the United States Patent and Trademark Office (USPTO) released a memorandum introducing a new interim process for workload management at the Patent Trial and Appeal Board (PTAB). The guidance establishes new procedures governing the Director’s discretion to deny institution of inter partes reviews (IPRs) and post-grant reviews (PGRs) under 35 U.S.C. §§ 314(a) and 324(a). These procedures apply to any case in which the deadline for a patent owner’s preliminary response has not yet passed.
Under the new interim process, decisions on whether to institute IPRs and PGRs will be bifurcated between (i) discretionary considerations and (ii) merits and other statutory considerations. If, in consultation with at least three PTAB judges, the Director declines to exercise discretion to deny the petition, the Director will then refer the petition to a three-member PTAB panel. This panel will issue a decision on institution addressing the merits and other statutory considerations.
Under these new procedures, a patent owner responding to a petition for IPR or PGR may now submit a brief limited solely to the issue of discretionary denial. The brief is due within two months after the PTAB enters a Notice of Filing Date Accorded to the petition. The petitioner may then file an opposition brief no later than one month after the patent owner files its brief. Additional briefing may be requested upon a showing of good cause. Notably, the traditional merits briefing schedule for IPRs and PGRs remains unchanged.
In addition to other relevant considerations—such as whether the PTAB or another forum has already adjudicated the validity of the patent—the Director may specifically consider the PTAB’s ability to meet its statutory deadlines for proceedings and other workload needs when deciding whether to exercise discretion to deny an IPR or PGR petition. Once an IPR or PGR is instituted, the PTAB must issue a final determination within one year. The Director, however, may extend this statutory deadline by six months upon a showing of good cause. 35 U.S.C. §§ 316(a)(11) & 326 (a)(11).
Recent reports suggest that multiple PTAB judges have recently left the USPTO under current voluntary retirement and separation programs, and the USPTO is preparing for PTAB staff reductions in April 2025 once the voluntary programs expire.
A copy of the memorandum can be viewed here.
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