Patent Office Issues New Guidance For PTAB Proceedings

The U.S. Patent and Trademark Office (USPTO) has not been slow in pushing out new Patent Trial and Appeal Board (PTAB) guidance following the change in administration. Updates are listed below; please contact us with any questions.

PTAB Discretionary Denials:

1. On February 28, 2025, the PTAB rescinded its June 21, 2022, memorandum titled "Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation." The 2022 memorandum was viewed as reducing the number of times the PTAB exercised its discretion to deny IPR challenges; particularly when IPR petitioners offered a Sotera stipulation (an agreement that if the PTAB institutes trial, the petitioner will not raise in parallel litigation any invalidity grounds that the petitioner raised, or reasonably could have raised, in the IPR petition); when a request for denial under Fintiv was based on a parallel ITC proceeding; or when an IPR petition presented a compelling