On March 26, 2025, Acting Director Coke Morgan Stewart of the USPTO issued a memorandum outlining an interim procedure for determining whether an IPR or PGR should be denied due to discretionary considerations. Discretionary considerations include, among other things, whether the patent is being challenged in a parallel proceeding, such as a District Court, and the status of that proceeding. The PTAB has issued several precedential decisions, including Fintiv, General Plastic, and Advance Bionics, outlining factors that are considered when determining whether to deny institution. In addition to these factors, the memorandum explains that the “Director will also consider the ability of the PTAB to comply with pendency goals for ex parte appeals,. its statutory deadlines for AJA proceedings, and other workload needs.”

Under this interim procedure, the determination regarding whether to institute an IPR or PGR will be bifurcated into a discretionary considerations phase and the merits phase. First, the patent owner may submit a brief on discretionary denial within two months of the PTAB's notice of filing date, and the petitioner has one month to respond.  The merits briefing schedule remains unchanged by this early briefing. Second, if IPR or PGR is not denied due to discretionary considerations, the USPTO will determine whether to institute based in the merits of the petition. In the interim procedure, the Director and at least three PTAB judges will consider briefing regarding whether discretionary denial is appropriate. If the IPR or PGR is not denied due to discretionary considerations, the petition will be referred to a three-member PTAB panel to decide whether to institute based on the merits.

We expect the PTAB to deny institution of IPRs and PGRs more often during this interim procedure.

A copy of the memorandum is available here: https://www.uspto.gov/sites/default/files/documents/InterimProcesses-PTABWorkloadMgmt-20250326.pdf

Please contact us at sughrue@sughrue.com if you have any questions about this interim procedure.