PTAB Announces Bifurcated Process for Consideration of Discretionary Denial Issues

by | Mar 28, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Jennifer Chheda, Yi Dulkeith, and Tova Werblowsky –

A new interim process for the Director to exercise discretion as to whether to institute an inter partes review(IPR) or a post grant review (PGR) was announced on March 26, 2025, in which discretionary considerations and merit-based statutory considerations are bifurcated.

On March 26, 2025, the U.S. Patent and Trademark Office (USPTO) Acting Director sent a memorandum regarding a new interim process for workload management to all Patent Trial and Appeal board (PTAB) judges.  The aim of the process is to improve PTAB efficiency and balance resources between post-grant proceedings and ex-parte appeals, while promoting “consistent application of discretionary considerations in the institution of AIA proceedings.”

According to the interim process, which applies to both IPRs and PGRs, the Director, in consultation with three PTAB judges will determine whether discretionary denial of institution of an IPR or a PGR is appropriate.  The Director will either: (i) issue a decision denying IPR or PGR institution; or (ii) refer the IPR or PGR petition to a panel of three PTAB judges.  If the Director refers the petition, then the PTAB judges will review the petition for merit-based and other non-discretionary statutory considerations and issue a decision denying or granting the petition.

The USPTO will permit briefing on requests for discretionary denial of institution.  Within two months of entry of a Notice of Filing Date Accorded of a petition, the patent owner may file a brief in favor of discretionary denial.  The petitioner may file a reply brief no later than one month after the patent owner files it brief.  In their briefing and consistent with existing PTAB precedents, the parties may address all relevant discretionary considerations.

This interim process applies to IPRs and PGRs where the deadline for the patent owner to file its preliminary response has not passed.  In that situation, if the deadline has passed for the patent owner to file its discretionary denial brief, the patent owner may file its discretionary denial brief within one month of the date of the memorandum (i.e., by April 26, 2025).

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.