Decoding PTAB Institution: A Return of PTAB Discretionary Denials *

Decoding PTAB Institution: A Return of PTAB Discretionary Denials *

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In February 2025, the United States Patent and Trademark Office (USPTO) rescinded former USPTO Director Kathi Vidal’s memo that instructed the Office not to deny institution under Fintiv. Then, in March 2025, the USPTO initiated a new interim process for workload management. Under this new interim process, decisions on whether to institute an inter partes review (IPR) or a post-grant review (PGR) will be bifurcated between the discretionary considerations that will be addressed by the Director and the merits and other statutory considerations. It is anticipated that this new bifurcated institution decision-making, coupled with a return to Fintiv, will result in far more discretionary denials of both IPR and PGR petitions.

This panel will review the new USPTO policy and procedure relative to institution of IPR and PGR petitions, and in particular, focus on what has actually happened over the several months since the USPTO changed course.

Materials

• Stewart Rejects Motorola’s Argument that Director Reviews Applied New Fintiv Guidance Retroactively
• Stewart Clarifies Application of Advanced Bionics, Orders New Briefing in Light of Rescinded Fintiv Memo
• Stewart Issues First Decisions on Discretionary Denial Under Interim Workload Management Process
• USPTO Rescinds Vidal Memo on Interim Discretionary Denial Procedure
• USPTO Director Takes Over Requests for Discretionary Denial

Survey

https://www.surveymonkey.com/r/Decoding-PTAB-Institution