Latest PTAB Memo Bifurcates Pre-Institution Briefing; Creates New Separate Briefing on Discretionary Considerations

On March 26, 2025, the USPTO issued the attached memo titled “Interim Processes for PTAB Workload Management,” which significantly alters the pre-institution briefing procedure for IPRs and PGRs.

Under the Interim Process, decisions on whether to institute trial will now be bifurcated between (i) discretionary considerations, and (ii) merits and non-discretionary statutory considerations. The Director, in consultation with at least three PTAB judges, will determine whether discretionary denial is appropriate. If the Director determines discretionary denial is not appropriate, the petition will be assigned to a three-judge panel for a decision on the merits and any other non-discretionary statutory considerations. The memo does not indicate whether the PTAB judges involved in discretionary determinations will be the same as those who review the merits.

Under the Interim Process, the parties may file briefing pertaining to discretionary considerations separate from briefing on the merits. Key points of the new briefing process include:

• Within two (2) months of issuance of the Notice of Filing Date Accorded to a petition, a patent owner may file a brief (14,000 word limit) arguing for discretionary denial of institution.
  • In addition to the considerations enumerated in existing precedent, such as Fintiv, General Plastic, and Advanced Bionics, the memo identifies additional discretionary considerations that may be addressed, including:
    • Whether the PTAB or another forum has already adjudicated the validity or patentability of the challenged patent claims;
    • Whether there have been changes in the law or new judicial precedent issued since issuance of the claims 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 the length of time the claims have been in force;
    • Compelling economic, public health, or national security interests; and
    • Any other considerations bearing on the Director’s discretion.
    • The memo separately highlights that the Director will also 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.
• A petitioner may file an opposition brief (14,000 word limit) no later than one (1) month after the patent owner’s brief.
• Any reply brief (if granted under the good cause standard) will be limited to 5,600 words.
• The patent owner preliminary response will still be due three (3) months after issuance of the Notice of Filing Date Accorded.

The memo indicates that the new process applies to proceedings where the deadline for the patent owner preliminary response has not yet passed; however, if the time for filing discretionary denial briefing has already elapsed (i.e., it is more than two (2) months from the Notice of Filing Date Accorded), the patent owner may submit discretionary denial briefing within one (1) month of the date of the memo.

The memo also indicates that the new processes are temporary in nature due, in part, to the current workload needs of the PTAB.