Interim Processes for PTAB Workload Management

The memorandum sets up a temporary, bifurcated institution process for IPRs and PGRs. The Director, in consultation with at least three PTAB judges, first decides discretionary denial, and only if denial is not appropriate is the petition referred to a three-member panel for a merits and non-discretionary decision. It also creates separate discretionary denial briefing with set deadlines and word limits. Patent owners may file a stand-alone brief on discretionary denial within two months of the Notice of Filing Date Accorded. Petitioners may oppose within one month after that brief, and must address discretionary considerations separately from the merits. The memorandum says the Director is exercising discretion under 35 U.S.C. §§ 314(a) and 324(a), and it cites 35 U.S.C. § 316(b) and 37 C.F.R. § 42.24. It also lists factors beyond existing precedent, such as settled expectations, strength of the challenge, and reliance on expert testimony, so petitioners face a broader range of arguments against institution. WHAT IT DOES: Bifurcates institution into (i) discretionary considerations, decided by the Director in consultation with at least three PTAB judges, and (ii) merits and other non-discretionary statutory considerations, decided by a three-member panel assigned under SOP 1 (Rev. 16). If discretionary denial is appropriate, the Director issues a decision denying institution; if not, the Director issues a decision saying so and refers the petition to the panel. Permits separate discretionary denial briefing: a patent owner brief within two months of the Notice of Filing Date Accorded, a petitioner opposition within one month after that, further briefing for good cause, a 14,000-word limit and a 5,600-word limit for any reply. Lists factors the parties may address, including prior adjudication of validity, changes in law, strength of the challenge, reliance on expert testimony, settled expectations, and economic, public health or national security interests. The Director will also consider PTAB ability to meet ex parte appeal pendency goals, statutory deadlines for AIA proceedings, and workload needs. WHO AND WHEN: Applies to IPR and PGR proceedings in which the patent owner's deadline to file a preliminary response has not yet passed. If the time for discretionary denial briefing has already elapsed, the patent owner may file within one month of the date of the memorandum (March 26, 2025). The memorandum is addressed to all PTAB Judges, and the processes are described as temporary. KEY QUOTE: "The processes described herein are temporary in nature due, in part, to the current workload needs of the PTAB." (p. 3) EARLIER GUIDANCE AFFECTED: Does not rescind anything it names. It follows the discretionary considerations in existing Board precedent, including Fintiv, General Plastic, and Advanced Bionics, and the Consolidated Trial Practice Guide (Nov. 2019). It refers to SOP 1 (Rev. 16) for panel assignment, and states that the merits briefing schedule and the schedule for requesting rehearing or Director Review of an institution decision remain unchanged. PRACTICE TIP: Calendar the discretionary denial briefing dates from the Notice of Filing Date Accorded, and prepare a separate, word-limited brief on the listed discretionary factors (patent owners) or an opposition (petitioners), without waiting for the merits stage. Issued by Coke Morgan Stewart, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office.