The United States Patent and Trademark Office (USPTO) issued a memorandum on March 26, 2025, introducing significant changes to how the Patent Trial and Appeal Board (PTAB) evaluates discretionary denial of inter partes review (IPR) and post-grant review (PGR) petitions. These changes are temporary and aim to address workload needs.
Under the new procedures, the Director and at least three PTAB judges will now consider whether to discretionarily deny institution, a departure from prior practice. The Fintiv factors will be applied to co-pending International Trade Commission (ITC) proceedings, and Sotera stipulations will be highly relevant but not dispositive in discretionary denial decisions.
The memo also introduces new considerations for discretionary denial, including changes in law, reliance on expert testimony, settled expectations, and compelling economic, public health, or national security interests. This revised framework is expected to result in an increase in discretionary denials and fewer petitions being instituted.
The content on BeyondSPX is for informational purposes only and should not be construed as financial or investment advice. We are not financial advisors. Consult with a qualified professional before making any investment decisions. Any actions you take based on information from this site are solely at your own risk.