Everything Old Is New Again At The USPTO

Over the years, the United States Patent and Trademark Office (USPTO) has instituted policies and procedures to help manage the workflow of the agency. For instance, when interferences were inundating the agency, sudden interest in precise procedural practices to help dismiss some of the proposed interference requests were implemented in the early 1990s into the early 2000s. Furthermore, many guidelines were issued over these past years to various examining groups to help these groups with overwhelming numbers of pending patent applications.

Recently, the USPTO Director, John Squires, released a memorandum on October 17, 2025, indicating that requests for Post Grant Reviews (PGR) and Inter Parties Review (IPR) would be subject to discretionary dismissals at the Patent Trial and Appeal Board (PTAB). In fact, on October 31, 2025, the Director denied 13 pending IPR proceedings without explanation.

With these most recent actions, it appears that a review of this new procedure from the USPTO is worth examining and evaluating for future practice at the PTAB. These actions stem from a February 2025 announcement that the Acting USPTO Director, Coke Morgan Stewart, and Chief Administrative Patent Judge, Scott Boalick, issued regarding workload management. In fact, Chief Administrative Patent Judge Boalick rescinded former USPTO Director Kathi Vidal's directive on discretionary denials that stated that the PTAB had improperly dismissed a request for an IPR. This left the opportunity for Acting Director Stewart to issue the new interim memorandum on the PTAB's workload. The new memo is depending on two of the Board's opinions, Apple Inc. v. Fintiv, Inc. and Sotera Wireless, Inc. v. Masimo Corp. The below-provided factors are ones that the Board listed when a petitioner and/or patent owner are in a parallel litigation. Those factors are:

1) If a court has granted a stay or one may be granted in the event a proceeding is instituted

2) Date of a trial relative to the Board's statutory deadline

3) How much has been invested by the court and the parties in the parallel proceeding

4) Overlap of issues in petition and parallel proceeding

5) Whether the petitioner and defendant are the same party

6) Any other issues that may be of importance in the exercise of discretionary dismissal that may be useful and impactful to the Board, including the merits of the proceeding

As can be seen, the Fintiv factors are ones that are geared toward avoiding duplicative proceedings.

In addition to these factors, the Sotera application factor is focused on estoppel grounds. Prior to the current policy change in the USPTO regarding PTAB proceedings, a discretionary denial under Fintiv could be avoided by stipulating that a particular issue or argument would not be part of a district court proceeding. This was termed the "Sotera stipulation."

With the introduction of new guidelines for discretionary dismissals of PTAB procedures such as PGR and IPR, the USPTO has built on the Fintiv factors and added some additional ones. The factors now under consideration for these dismissals are as follows:

1) Has the PTAB (or any other forum) already adjudicated validity or patentability?

2) Have there been any changes in the law or judicial proceeding enacted since the claims issued that may affect their patentability?

3) What is the strength of the unpatentability challenge?

4) Does the petitioner rely on expert testimony?

5) Settled expectations of the parties, i.e., how long have the claims been in force?

6) Any compelling economic, public health, or national security concerns?

7) Other Director concerns, such as workflow issues?

This new emphasis by the PTAB takes shape through new procedures that involve a bifurcated process that initially reviews the discretionary factors listed hereinabove. As such, patent owners can file two preliminary responses, one addressing the discretionary denial issues and another addressing the merits. These preliminary responses on discretionary dismissal will be reviewed by the Director, in consultation with at least three senior administrative patent judges. Although this procedure is relatively new, certain factors seem to be more heavily weighed by the Director in favoring denial of the requested action. In particular, the cases already reviewed and decided emphasized the following:

1) Likelihood of settlement

2) Likelihood of district court stay

3) Use of expert testimony in the petition

In order to properly face the new discretionary practice for post-grant proceedings, there are several suggestions that may be useful for both the petitioner and the patent owner. Being precise and prepared are essential for both the petitioner and the patent owner. For the petitioner, instituting a post-grant proceeding prior to a court action should be more thoroughly reviewed as a sound strategy to avoid a discretionary dismissal. Also, be careful in how to use stipulations because it appears that the Director is not weighing the use of such stipulations as a means to avoid a discretionary dismissal, as of this date. Additionally, for petitioners, it is evident that workload-based denials are being issued more frequently than previously done. Be prepared for that possibility. As for the patent owner, be prepared ahead of time by anticipating a filing of a preliminary response addressing the possibility of a discretionary dismissal.

The use of discretionary dismissals seems to be a tool that the USPTO is utilizing to control workflow. It is reminiscent of what the USPTO has done in the past to help manage the agency workflow issues. They say everything old is new again. Well, it appears to be the case with the USPTO and the emphasis on ways to manage its workflow issues.

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.