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ARTICLE · 18 JULY 2022

Interim Procedure For Discretionary Denials Established

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On June 21, USPTO Director Kathi Vidal issued a memorandum concerning the PTAB's practice of determining whether to institute an AIA post-grant proceeding in view of the Fintiv factors.

United StatesIntellectual Property
David Maiorana
David Maiorana
David Linden
David Linden
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On June 21, USPTO Director Kathi Vidal issued a memorandum concerning the PTAB's practice of determining whether to institute an AIA post-grant proceeding in view of the Fintiv factors.  The memorandum is in part a result of feedback received from a request for comments on the PTAB's current approaches to exercising its discretion to deny institution.  While the Office anticipates exploring the possibility of making rules through the formal rulemaking process, the memorandum establishes an interim procedure for Fintiv factor application and clarifies certain aspects of the PTAB's current practices.

  1. Compelling Merits

Fintiv factor six specifies that the PTAB will consider “other circumstances that impact the Board's exercise of discretion, including the merits” in determining whether to institute a post-grant proceeding.  The memorandum clarifies that when the information initially presented by the petitioner is “merely sufficient to meet the

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