by Dennis Crouch
In a significant procedural shift, Acting USPTO Director Coke Morgan Stewart has announced a new “Interim Process for PTAB Workload Management” that fundamentally changes aspects of how America Invents Act (AIA) patent challenges are handled. The March 26, 2025 memorandum bifurcates the institution decision process by centralizing discretionary denial authority with the Director herself. This follows the Feburary 28, 2025 action rescinding former Director Vidal’s June 2022 memorandum that had significantly curtailed discretionary denials based on the Fintiv factors when parallel district court litigation is pending. I expect this change will substantially increase the percent of IPR/PRG petitions denied at the institution stage.
USPTO leadership appears to have a goal of increasing discretionary denials to protect patentees from harassment and delay in enforcing their property right. In addition, though, it appears that the Office has a genuine concern about workload management as stated in the memo. The PTAB is being stretched thin by staff shortages caused by the return-to-office (RTO) requirement coupled with reduction-in-force (RIF) efforts from President Trump and Elon Musk’s White House. A substantial number of PTAB judges have quit and further reductions are expected in the coming month. The memorandum indicates that the new procedures are “temporary in nature due, in part, to the current workload needs of the PTAB.”
One difficulty with discretionary denials in the past is that patentees had little room in their briefs to address the issue in any detail. As discussed below, the new rule provides substantial space for patentees to brief the issue. This will also alter district court proceedings, with patentees again seeking to move faster at the outset to obtain an early trial date and accused infringers seeking delay as well as preemptive stays.
Under the new procedure, the Director—consulting with at least three PTAB judges—will first determine whether discretionary denial is appropriate before a case can proceed to merits review. This represents a dramatic departure from prior practice where the three-judge PTAB panels simultaneously evaluate both discretionary issues and substantive patentability arguments when deciding whether to institute review. The memo does not reveal how the three judges will be chosen, but I expect it will not be a purely random selection, and those judges will likely serve in a semi-permanent role over a period of months.
For context, the USPTO typically follows Standard Operating Procedure 1 (SOP 1) for panel assignments, which is referenced in the memo regarding the second stage of the process: “If [discretionary denial] is not appropriate, the Director will issue a decision regarding that determination and refer the petition to a three-member panel of the PTAB assigned according to Standard Operating Procedure (SOP) 1 (Rev. 16).” SOP 1 generally guides how judges are assigned to cases based on factors such as technical expertise, workload balance, and conflicts of interest. However, the memo creates the discretionary denial consultation role without explicitly stating whether these same SOP 1 principles will apply to selecting the judges who consult on discretionary matters.
Bifurcated Approach and New Briefing Allowances
The new process creates separate tracks for discretionary considerations versus merits-based arguments. Patent owners will now have two months after the Notice of Filing Date Accorded to file briefing specifically addressing discretionary denial grounds, with petitioners allowed one month to respond. These briefs are limited to 14,000 words, with any reply limited to 5,600 words.
Bifurcation had been formally considered (but ultimately rejected) as part of an Advanced Notice of Proposed Rulemaking (ANPRM) in 2023. Separate bifurcated briefing was then suggested in a 2024 Notice of Proposed Rulemaking (NPRM), but but no final rule ever issued.
Expanded Discretionary Factors
Beyond streamlining process, the memorandum also significantly expands the factors that may justify discretionary denial. These new considerations include:
- Whether the PTAB or another forum has already adjudicated the validity or patentability of the challenged patent claims
- Whether there have been changes in law or new judicial precedent since issuance that may affect patentability
- The strength of the unpatentability challenge
- The extent of the petition’s reliance on expert testimony
- Settled expectations of the parties, such as how long the claims have been in force
- Compelling economic, public health, or national security interests
- Any other considerations bearing on the Director’s discretion
Perhaps most significantly, the Director will explicitly consider “the ability of the PTAB to comply with pendency goals for ex parte appeals, its statutory deadlines for AIA proceedings, and other workload needs.” See 35 U.S.C. § 316(b).
The new process clearly favors patent owners, who now have enhanced opportunities to seek discretionary denial before merits are even considered.
The USPTO plans to host a Boardside Chat to further explain these changes, but no date has been released.