USPTO Issues Significant Changes To Post-Grant Patent Review Procedures

This week, the U.S. Patent and Trademark Office (USPTO) issued a memorandum introducing new processes related to discretionary denials of inter partes review (IPR) and post-grant review (PGR) submissions filed with the Patent Trial and Appeal Board (PTAB). This is the latest in a series of steps related to discretionary denials that will likely benefit patent owners by providing the PTAB with additional discretion to deny more patent challenges (more here: "USPTO Rescinds PTAB Denial Guidelines," by Loeb partner Biil Kramer).

A discretionary denial of an IPR or a PGR occurs when the PTAB, based on certain factors, decides not to institute a review of a patent's validity regardless of whether the petition may otherwise warrant institution on the merits. Earlier this month, the USPTO rescinded a 2022 memo that had limited the use of discretionary denials. This change will likely result in more discretionary denials (i.e., petitions that will not be instituted). This