Following the U.S. Patent and Trademark Office’s (USPTO’s) decision to rescind the Fintiv Memo on Feb. 28, 2025, the result was that the Patent Trial and Appeal Board (PTAB) would have greater flexibility in exercising its discretion to deny post-grant review (PGR) and inter partes review (IPR) petitions. As we wrote then, it was unclear whether further guidance was forthcoming, but challenging the validity of a patent through either a PGR or IPR had become more difficult.
We now have further guidance, all but confirming that there will be a marked increase in discretionary denials (at least for now). On Mar. 26, 2025, acting USPTO Director Coke Morgan Stewart created a temporary two-step process where she and PTAB judges will first decide whether to exercise discretion to deny PGR and IPR petitions. If a petition is not denied, only then will the PTAB turn to the merits. Stewart’s memo represents a significant change in procedure. Under the prior regime, PTAB judges made discretionary denial decisions while also considering the merits of a petition, and the USPTO Director was not involved.
According to Stewart, the change is intended to address the PTAB’s “workload needs” and establish several new factors that might warrant discretionary denials. These additional factors include whether there have been changes in the law or new judicial precedent issued since issuance of the claims that may affect patentability; the extent of the petition’s reliance on expert testimony; settled expectations of the parties, such as the length of time the claims have been in force; and compelling economic, public health, or national security interests.
What’s not clear, however, is how these factors will be applied in practice. For example, in a space dominated by expert testimony, how much expert testimony is too much? Or how old must a patent be before expectations are deemed “settled”? Regardless, the implication is clear. Stewart’s memorandum signals an increase in discretionary denials and fewer petitions being instituted, a result that ultimately inures to the benefit of patent owners.
