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ARTICLE · 18 JUNE 2025

First Denial Based On USPTO's New Discretionary Denial Factors

K&L Gates
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Earlier this year, Chief Judge Boalick issued guidance on the USPTO's recission of "Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings...

United StatesIntellectual Property
Erik Halverson
Erik Halverson
Rebekah Hill
Rebekah Hill
Jared Lund
Jared Lund

Earlier this year, Chief Judge Boalick issued guidance on the USPTO's recission of "Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation," explaining how the Fintiv factors should be addressed going forward. Shortly after, Acting Director Stewart issued a memorandum titled "Interim Processes for PTAB Workload Management" that provided additional non-Fintiv discretionary factors that should be assessed to determine whether discretionary denial of an IPR petition is appropriate.

Since the memorandum's release, there have been 11 decisions involving requests for discretionary denial; seven requests have been granted and four have been denied.

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