PTAB Discretionary Rejections: Reflections and Trends from Two Months of Interim Briefing Directors' Reviews
In a significant move, the United States Patent and Trademark Office (USPTO) has adopted a more nuanced and multifactorial discretionary denial framework for Patent Trial and Appeal Board (PTAB) post-grant reviews. This change, effective in 2025, aims to balance the interests of avoiding duplicative litigation, managing limited Board resources, and respecting litigation dynamics.
The new framework sees the reinstatement of the Fintiv factors, which allow the PTAB to deny institution of post-grant reviews based on the status of parallel district court litigation. Enhanced consideration of USPTO workload management is another key development, with PTAB panels now encouraged to consider resource strain caused by petitions, particularly in complex or voluminous cases.
Petitioners are now advised to focus on fewer, more targeted petitions and coordinate filings to minimise unnecessary PTAB resource consumption. Delaying filings or failing to provide precise stipulations to avoid duplicative litigation risks higher chances of denial.
The new strategic guidance also emphasises the importance of timing and procedural posture. Recent PTAB decisions have denied petitions because the parties or patent status in concurrent litigation have created settled expectations. This includes cases where the patent was dismissed in district court litigation.
The current environment encourages petitioners to file petitions early and more broadly, potentially increasing the overall USPTO workload even as the PTAB aims to manage resource constraints.
A subsequent webinar, titled "Discretionary Denial at the PTAB: Evolving Insights From the Director's Interim Briefing Process," delves deeper into these developments and their implications for discretionary denial practice at the PTAB. However, CLE credit is not available for those who watch a recording of the webinar.
Attendees of the live webinar will receive a uniform certificate of attendance that shows the states in which the program was approved. New Jersey grants reciprocal credit for programs approved in New York, and we can also issue Connecticut credit. WilmerHale, the organisers of the event, have been approved as a Colorado Certified Provider and have been accredited by the New York State and California State Continuing Legal Education Boards.
The topics to be covered in the webinar include trends in arguments for and against discretionary denial, the Director's decisions regarding discretionary denial, and considerations for Patent Owners and Petitioners. The type and amount of credit awarded in Colorado will be determined solely by the Colorado Supreme Court. Attendees who need credit in another jurisdiction can use the uniform certificate of attendance to self-apply. If requested, the program will apply for Colorado CLE (after the program).
Notably, the program is planned to offer CLE credit for experienced New York attorneys only.
In conclusion, the evolving landscape of PTAB workload management requires patent stakeholders to adopt refined strategies in timing, petition content, and coordination to navigate the new discretionary denial framework effectively. The upcoming webinar offers valuable insights into this complex topic.
- The new discretionary denial framework at the PTAB, effective in 2025, underscores the importance of technology, as petitioners are advised to coordinate filings and focus on fewer, more targeted petitions to minimize unnecessary PTAB resource consumption.
- The upcoming webinar, titled "Discretionary Denial at the PTAB: Evolving Insights From the Director's Interim Briefing Process," delves into technological aspects of the discretionary denial practice at the PTAB, discussing arguments for and against discretionary denial, and considerations for Patent Owners and Petitioners.
