Patent Update: Discretion Takes Back Control at the PTAB

In a significant procedural pivot, the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO) has radically redesigned how it handles discretionary denials in post-grant proceedings such as inter partes review (IPR) and post-grant review (PGR). These changes mark one of the most consequential shifts since the America Invents Act created these proceedings over a decade ago.

Post-grant proceedings: A quick refresher. Post-grant proceedings are administrative trials that allow third parties to challenge the validity of issued U.S. patents outside of federal court. Congress designed them to be faster and less expensive than litigation. A patent challenger must file a petition providing specific reasons it believes a patent is invalid, and the PTAB decides whether to institute a trial or not. That institution decision is unappealable.

Traditionally, when a petition was denied institution, that denial fell into two categories: merit-based — where the PTAB concluded the petition failed to show a reasonable likelihood that at least one challenged claim was unpatentable — and discretionary — where the PTAB denied review for policy or procedural reasons, such as when arguments had already been fully considered during examination and no material error by the examiner was shown. Historically, discretionary denials were relatively rare. But under new guidance...