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ARTICLE · 06 MARCH 2025

PTAB Rescinds Discretionary Denial Memorandum

Jones Day
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On Friday, the USPTO rescinded its June 21, 2022, guidance memorandum entitled "Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation."

United StatesIntellectual Property
Ashvi Patel
Ashvi Patel
Matthew Johnson
Matthew Johnson
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On Friday, the USPTO rescinded its June 21, 2022, guidance memorandum entitled "Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation." That memorandum discussed Office policy for discretionary denials in view of co-pending litigation.

As we covered here, the memorandum stated that a petition would not be discretionarily denied when:

  • "a petition presents compelling evidence of unpatentability";
  • "a request for denial under Fintiv is based on a parallel International Trade Commission proceeding"; or
  • "a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition."

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