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ARTICLE · 11 JUNE 2025

Critical Strategic Considerations For PTAB Discretionary Denials

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USPTO Acting Director Coke Morgan Stewart's 26 March memorandum fundamentally altered the institution framework for IPRs and PGRs by removing the PTAB's...

United StatesIntellectual Property
Christopher “Kit” L. Crumbley
Christopher “Kit” L. Crumbley

USPTO Acting Director Coke Morgan Stewart's 26 March memorandum fundamentally altered the institution framework for IPRs and PGRs by removing the PTAB's authority to decide discretionary denial issues. Now, the director personally decides discretionary issues before PTAB panels may evaluate petition merits—a dramatic shift that early evidence suggests will significantly increase denial rates.

The changes create immediate strategic implications for practitioners, from navigating expanded discretionary factors to managing compressed response timelines. Early decisions reveal a focus on parallel litigation timing while giving less weight to traditional tools like Sotera stipulations.

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