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On March 26, 2025, the USPTO issued an Interim Processes for PTAB Workload Management memorandum introducing a bifurcated decision-making process at the institution stage of America Invents Act (AIA) trials. On October 17, 2025, the United States Patent and Trademark Office (USPTO) issued a Director Institution of AIA Trial Proceedings memorandum, updating this process whereby the authority for institution decisions now centrally resides with the USPTO Director. Both of these memos mark major procedural changes in how the Patent Trial and Appeal Board (PTAB) handles institution of inter partes review (IPR) and post-grant review (PGR) proceedings.

Under the new process, the decision whether to institute a trial is bifurcated into two phases:

  1. Discretionary Denial Phase — Where the Director in consultation with at least three PTAB judges, decides whether to discretionarily deny a petition based on a range of policy and discretionary factors.
  2. Merits/Statutory Phase — If discretionary denial is not appropriate, the petition proceeds to an assessment of the merits and statutory requirements for institution. When the bifurcated process was first implemented, this assessment was referred to a three-judge PTAB panel. Beginning October 20, 2025, this assessment is now done by the Director himself, in consultation with at least three PTAB judges.

To support this bifurcated decision making, a new separate briefing process on discretionary considerations (distinct from the merits briefing in the Petition and Patent Owner Preliminary Response) was also implemented. The bifurcated briefing timeline is as follows (including procedural updates implemented subsequent to the March 26 memo):

  • A patent owner may file a brief arguing why discretionary denial is warranted. Patent owner’s brief is limited to 20 pages and is due within two months of the Notice of Filing Date Accorded (NFDA).
  • A petitioner may file an opposition to patent owner’s discretionary denial brief. Petitioner’s brief is likewise limited to 20 pages and is due within three months of the NFDA.
  • Additional limited discretionary briefing may be authorized for good cause, but is not available as of right.
  • The standard preliminary response deadline remains unchanged (i.e., within three months of the NFDA).

The March 26 memo highlighted additional discretionary factors (beyond traditional ones from Fintiv, General Plastic, and Advanced Bionics) that the Director may consider, including prior validity adjudications, changes in law, strength of unpatentability challenges, reliance on expert testimony, settled expectations, and broader policy concerns like economic/public health interests and PTAB resource management. A set of FAQs released by the USPTO to clarify aspects of the new process provided additional guidance, including that petitioners should file any stipulations “as soon as practicable” so that the patent owner can address their impact in the discretionary briefing, and that the Director would consider whether such stipulations materially reduce overlap between proceedings. Regarding expert testimony, the FAQs suggested that heavy reliance on expert testimony — or reasonable expert disputes on dispositive issues — may signal that issues are better suited for Article III courts, potentially weighing against institution.

The October 17 memo indicated that the Director will typically issue summary notices granting or denying institution, unless “detailed treatment of issues is appropriate.”

Key Takeaways

  • Bifurcated Decision Making: Discretionary denial is evaluated first by the Director; merits are addressed only if discretionary denial is declined.
  • Separate Discretionary Briefing: Patent owners now have a stand-alone briefing window early in the proceeding to press discretionary denial arguments.
  • Petitioners must respond strategically, addressing patent owner’s arguments and also providing reasons why institution is appropriate.
  • Expanded Discretionary Factors: Beyond Fintiv, General Plastic, and Advanced Bionics, the Director may consider prior adjudications, changes in law, strength of the challenge, reliance on expert testimony, settled expectations, public interest concerns, and other equitable factors.
  • Director-Led Institution Decisions: The Director generally issues a summary grant or denial of institution, referring matters to PTAB judges only when detailed treatment is warranted.
  • Summary Notices: Institution decisions will most often be issued as summary notices without extensive reasoning, increasing uncertainty for stakeholders about decision rationales.

Best Practices for Practitioners and Parties

  • Treat Discretionary Denial as a Stand-Alone Advocacy Phase: Develop focused, evidence-driven arguments tailored to the Director’s broader discretion.
  • Prepare for Discretionary Briefing Early:
    • Petitioners should analyze discretionary considerations even prior to filing their petition. A strong story about why institution is an appropriate use of Board resources is necessary to get past the discretionary denial phase. A showing of Office error under § 352(d) has evolved as one strong argument for petitioners. In some cases, ex parte reexamination may be a more attractive option than an IPR, particularly for older patents.
    • Patent owners should plan discretionary denial briefs immediately upon receiving notice of a petition, focusing not just on traditional Fintiv factors but also on new considerations like prior adjudications and policy impacts. Settled expectations has evolved as a strong argument for patent owners where a patent issued over six years ago.
  • Coordinate Strategy Across Briefs: Ensure consistency between discretionary briefing and merits positions without duplicating arguments.
  • Strategically Align With PTAB Priorities: Both sides should align arguments with PTAB’s workload management and broader institutional goals — e.g., efficiency, avoidance of duplicative reviews, and resource constraints — to strengthen their positions.

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This article appeared in the 2025 PTAB Year in Review: Analysis & Trends report.

© 2026 Sterne, Kessler, Goldstein & Fox PLLC

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