Key Takeaways:
- The Director, in consultation with at least three APJs, will now decide the discretionary denial question, rather than having the merits panel decide the issue.
- Discretionary denial will have separate briefing.
- The Director will consider the workload of the PTAB in determining whether denial is warranted.
On March 26, 2025, Coke Stewart Morgan, Acting Under Secretary
of Commerce for Intellectual Property and Acting Director for the
USPTO, issued Interim Processes for PTAB Workload Management. The
memorandum is an attempt to address the upcoming capacity
constraints that the PTAB expects to experience as a result of the
Trump Administration's efforts to reduce the size of the
federal workforce. The current workforce of 200+ Administrative
Patent Judges has already been reduced by a number of APJ's
taking the "fork in the road" retirement offer; further
reductions are expected to result from measures likely to be
instituted starting in April 2025.
The memorandum makes two notable changes to the prior discretionary
denial procedure. The first notable change is discretionary denial
decisions will be taken up by the Director herself instead of the
panel. The Director, in consultation with at least three judges,
will determine whether to deny the petition on discretionary
grounds. Decisions on discretionary denial will then be issued. If
the petition survives this step, a panel will pick up the petition
to decide whether to institute based on the merits and other
non-discretionary statutory considerations. The memorandum also
provides for separate briefing on the discretionary denial
issue.
The second notable change is to the considerations the memorandum
identifies as relevant to the discretionary denial decision. In
addition to factors considered previously under Fintiv
(petitions filed where co-pending litigation is sufficiently
advanced), General Plastic (follow-on petitions on the
same patent), and Advanced Bionics, (petitions using the
same art considered during prosecution or making the same argument
as made in prosecution), the Director will also consider whether
any forum has already adjudicated the validity or patentability of
the challenged claims, the extent of the petitioner's reliance
on expert testimony, and the "settled expectations of the
parties," e.g., the length of time the claims have
been in force.
The Director will also expressly consider the PTAB's ability to
comply with its pendency goals for ex parte appeals, its
statutory deadlines for AIA proceedings, and other workload needs.
While Congress allowed for the Director to consider the efficient
administration of the PTO and its ability to meet the statutory
deadlines of the AIA, the Director is making it plain in this
memorandum that the workload of the PTAB will be considered when
determining whether to dedicate resources to reviewing a
petition.
We expect that this memorandum will increase the number of
discretionary denials of institution, which will force more
litigants in co-pending patent infringement litigations to make
these patent challenges in district court.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
