USPTO Shakes Up IPR Practice With Expanded Discretionary Denials

Even without a Senate-confirmed director in place, the U.S. Patent and Trademark Office (USPTO) under the new Trump administration is taking a bold new direction. Acting Director Coke Morgan Stewart has greatly expanded the use of discretionary denials of inter partes review (IPR) petitions—injecting fresh uncertainty into the process.

Basics and the Role of Discretion

The IPR process was created by the 2011 Leahy-Smith America Invents Act (AIA) as a faster, more cost-effective alternative to challenging patent validity in court. Most often used by defendants in infringement cases, an IPR begins when a petitioner files with the Patent Trial and Appeal Board (PTAB), laying out arguments for why a patent claim should be invalidated.¹