By Pranita Dhungana and Matt Johnson –
The USPTO recently published a new webpage on the Interim Director Discretionary Process, which provides information regarding the bifurcated process for consideration of discretionary denial issues announced in the March 26, 2025 Process Memorandum. Under the Process Memorandum, decisions on whether to institute IPR and PGR are bifurcated between (i) discretionary considerations, and (ii) merits and other non-discretionary considerations.
The process for discretionary considerations begins once the PTAB issues a Notice of Filing Date Accorded and accepts a patent owner’s Mandatory Notice. At that point, a new paper type, “PO Discretionary Denial Brief,” becomes available. A patent owner may file its discretionary denial brief within two months of the Notice date. Once the patent owner’s brief is filed, another new paper type, “PET Opposition to Discretionary Denial Brief,” becomes available, which allows the petitioner to respond within one month of the patent owner’s brief. Neither party may stipulate to a later due date. If the patent owner elects not to submit a discretionary denial brief, the Director typically will not weigh in, and the case will proceed directly to a Board panel for institution consideration.
Beginning September 1, 2025, both briefs are limited to 20 pages rather than the 14,000 word limit initially set forth in the Process Memorandum. Either party may request additional pages by demonstrating good cause. Discretionary considerations should not be presented in the petition or the POPR.
A patent owner’s brief should focus on factors that justify denying institution, drawing from PTAB precedent, the Consolidated Trial Practice Guide, the list of considerations in the Process Memorandum, and any other facts or circumstances bearing on the Director’s discretion to institute. A patent owner’s brief may include issues relating to 35 U.S.C. § 325(d), parallel proceedings, parallel petitions, and serial petitions. A petitioner’s brief should be responsive to the patent owner’s brief. While merits arguments should not be repeated verbatim, parties should briefly explain why merits are relevant to the discretionary denial decision, if they are. Parties may also submit evidence. A reply and a sur-reply are not authorized by default, but parties may request authorization by demonstrating good cause.
The Director will conduct a holistic review upon receiving the petition, the discretionary denial briefs, the POPR, and any evidence made of record. In addition to facts and circumstances raised in the briefs, the Director may also consider other facts and circumstances such as those within the purview of the Office that the parties are not in a position to raise, those in the record or in the public domain, and those needed to maintain consistency with Discretionary Decisions that the Director has already issued.
The Director will determine, in consultation with at least three senior PTAB judges, who are separate from those judges addressing the merits, whether discretionary denial is appropriate. When parties present arguments regarding the strength of the merits, the Director will consult with USPTO personnel with relevant technical expertise. Absent good cause, the Director will issue a decision on discretionary considerations within one month of the due date of the last relevant paper filed. Each decision will either deny the petition or refer the petition to the Board.
If the decision refers the petition to the Board, a Board panel will issue an institution decision addressing the merits and non-discretionary considerations. A Board panel is not bound by any statements by the Director regarding the merits, but if the panel’s assessment differs from the Director’s, the panel must explain why.
If the Director exercises discretion to deny institution, the petitioner may file a request for rehearing or Director Review within 30 days of the Director’s decision. If the Director decides that discretionary denial is not appropriate, the patent owner may file a single request for rehearing or Director Review, but should wait until after the Board panel issues its decision.
Matthew Johnson
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