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ARTICLE · 23 JUNE 2022

Fintiv Refined: USPTO Provides Interim Procedure For Discretionary Denials

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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On June 22, 2022, the USPTO issued guidance on an Interim Procedure for Discretionary Denials ("Guidance"). In the Guidance, Director Vidal notes that the office is planning to explore rulemaking regarding discretionary denials.

United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
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On June 22, 2022, the USPTO issued guidance on an Interim Procedure for Discretionary Denials ("Guidance"). In the Guidance, Director Vidal notes that the office is planning to explore rulemaking regarding discretionary denials, but, "in the meantime . . . several clarifications need to be made to the PTAB's current application of Fintiv to discretionary institution where there is parallel litigation." The memo provides that this guidance is binding on the PTAB, as it is issued under the Director's authority to govern the PTAB's implementation of various statutory provisions. Guidance at 3.

In accordance with the Guidance, the "PTAB will not deny institution of an IPR or PGR under Fintiv" in the following scenarios:

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