Intellectual Property Litigation: Acting USPTO Director Sheds Light on New Bifurcated Discretionary Denial Process With Recent Decisions

In this article, authors Catherine Nyarady & Crystal Parker (Paul Weiss) look into recent procedural reforms announced by Coke Morgan Stewart, the Acting Director of the U.S. Patent and Trademark Office (USPTO), regarding how the USPTO and the Patent Trial and Appeal Board (PTAB) evaluate petitions for inter partes review (IPR) and post-grant review (PGR). These administrative mechanisms allow parties to challenge the validity of patents as an alternative to district court litigation. The changes aim to enhance PTAB efficiency and consistency while managing workload across administrative patent judges (APJs).

Outlined in a March 26 memorandum titled “Interim Process for PTAB Workload Management,” the reforms introduce a two-step approach to petition evaluation. First, the PTAB will assess whether a petition should be discretionarily denied based on workload management and other policy considerations. This threshold decision is made by the acting director alongside at least three APJs. If a petition clears this discretionary review, it then proceeds to a second stage where its merits and statutory compliance are fully evaluated.

The memorandum is designed to help balance the PTAB’s responsibilities under 35 U.S.C. §6, including managing IPR and PGR proceedings while reducing delays in other areas such as ex parte appeals. This bifurcated process brings more clarity and structure to discretionary denials, a historically opaque aspect of PTAB practice. The authors note that recent decisions provide valuable guidance on how this new framework is likely to be applied, making it a key development for patent challengers and holders alike…

CONTINUE READING…