Developing Insights from the Director's Interim Briefings: Changes in Discretionary Denials at PTAB
The U.S. Patent and Trademark Office (USPTO) has introduced a significant change in how it handles discretionary denials in inter partes review (IPR) and post-grant review (PGR) proceedings. This new interim process, effective since late February 2025, represents a shift from previous procedures and introduces a more structured, albeit sometimes ambiguous, approach to balancing workload and statutory obligations [1][2].
Key Changes and Procedures
The USPTO has rescinded the June 2022 memorandum on discretionary denials, replacing it with a new bifurcated review process [1]. This new process applies to petitions where the patent owner files a preliminary response (or the deadline to do so passes) after March 26, 2025. The process is now bifurcated: the USPTO Director, in consultation with at least three PTAB judges, first determines whether discretionary denial is appropriate, without considering the merits of the petition. Only if the Director denies discretionary denial does the petition advance to a three-member panel for consideration on the merits and statutory requirements [1][2].
After briefing is complete, the Director reviews discretionary considerations, such as prior adjudication of validity, changes in law, strength of the challenge, expert testimony, settled expectations (e.g., how long claims have been in force), compelling public interests, and other relevant factors [1][3]. If discretionary denial is not warranted, the case proceeds to the merits stage [1].
Notable Factors in Discretionary Denial
Recent Director decisions have emphasized the settled expectations of the parties—specifically, the length of time patent claims have been in force—as a significant factor in discretionary denial determinations [1][3]. This reflects a move toward a multifactor balancing test, reminiscent of the Apple v. Fintiv factors, but updated for current USPTO priorities [3].
The USPTO has issued conflicting guidance—through a discretionary denial memo, a boardside chat, and FAQs—creating some confusion. The latest FAQ is now considered controlling, superseding previous sources [2]. Early decisions under the new process have revealed inconsistencies with published guidance, leaving both petitioners and patent owners uncertain about how discretionary denials will be applied in practice [2].
Practical Implications
The new process is intended as an interim solution to manage PTAB workload, with the Director taking a more active role in discretionary denials before cases proceed to the merits [1][2]. Parties should closely monitor how the “settled expectations” factor is applied in early Director decisions and be prepared to address it in briefing, as it may increasingly influence discretionary denial outcomes [3]. The process remains in flux, and further guidance or refinement is likely as the PTAB and stakeholders adapt to the new framework [2].
Webinar on PTAB Discretionary Denial Process
WilmerHale, a law firm accredited by the New York State and California State Continuing Legal Education Boards, is hosting a webinar to discuss the latest developments in the USPTO's interim process for PTAB discretionary denials. The webinar will take place on Wednesday, July 30, 2025, from 12-1 p.m. ET. Attendees can submit questions during the webinar. Participants include David Cavanaugh, Alexis Cohen, Greg Lantier, and Joshua Stern.
All attendees will receive a uniform certificate of attendance showing the states in which the program was approved. The program is intended for experienced New York attorneys only. The type and amount of credit awarded in Colorado will be determined by the Colorado Supreme Court. New Jersey grants reciprocal credit for programs approved in New York, and Connecticut credit can be issued. Attendees can self-apply for CLE credit in another jurisdiction using the uniform certificate of attendance. However, CLE credit is not available for on-demand webinar recordings.
[1] USPTO, Discretionary Denial Memorandum (Feb. 28, 2025). [2] USPTO, Discretionary Denial FAQs (Mar. 26, 2025). [3] USPTO, Discretionary Denial Boardside Chat (Apr. 12, 2025).
- The bifurcated review process introduced by the USPTO for petitions filed after March 26, 2025, in inter partes review and post-grant review proceedings now takes into account the "settled expectations of the parties," such as the length of time patent claims have been in force, as a notable factor in discretionary denial determinations.
- As technology advances and allowed patent claims remain in force for extended periods, the current fluidity in the PTAB's discretionary denial process, with its focus on "settled expectations," may impact the strategic planning and briefing process for patents and inter partes review petitions.
