Discretionary denials of inter partes and post-grant review petitions have climbed substantially after a memo issued early this year by the acting director of the US Patent and Trademark Office. Jessica Kaiser, Chris Marando and Jon Carter of Perkins Coie explore the fallout of these changes and what they signal for how the office will handle decisions.
In March, US Patent and Trademark Office (USPTO) Acting Director Coke Morgan Stewart issued a memorandum that significantly altered the way the Patent Trial and Appeal Board (PTAB) handles institution decisions.
In particular, the memo bifurcated the process such that the acting director first decides all discretionary denial issues and only thereafter do petitions not discretionarily denied proceed to an assessment of the technical merits by a panel of administrative patent judges (APJs).
For the discretionary denial stage, the memo confirmed the applicability of existing doctrines (e.g., Fintiv) while adding several new “relevant considerations,” including what the acting director referred to as “[s]ettled expectations of the parties, such as the length of time the claims have been in force.”
As of Aug. 13, the USPTO has discretionarily denied 60% of the 294 inter partes review (IPR) and post-grant review petitions considered under the new…
