USPTO Adopts “Interim Processes” to Address PTAB Workload Concerns

On March 26, 2025, the U.S. Patent and Trademark Office (“USPTO”) issued a memorandum detailing the adoption of “temporary” measures that are being implemented to address workload concerns of the Patent Trial and Appeal Board (“PTAB”). This follows a February 28, 2025, memorandum in which the PTAB rescinded a June 2022 memorandum that provided guidance on circumstances in which the PTAB could use its discretion to deny institution of post-grant review proceedings in view of parallel district court litigation. Honigman’s prior alert about the February 28 memo is available here.

According to the March 26, 2025 memorandum, the interim processes “aim to improve PTAB efficiency, maintain PTAB capacity to conduct AIA proceedings, reduce pendency in ex parte appeals, and promote consistent application of discretionary considerations in the institution of AIA proceedings.” In furtherance of that stated goal, the PTAB is implementing the following new procedures with respect to AIA trial proceedings:

1. Decisions on whether to institute a post-grant proceeding will be bifurcated between (i) discretionary considerations and (ii) merits and other non-discretionary considerations. For all discretionary considerations, the PTAB Director, in consultation with at least three PTAB judges, will determine whether discretionarily denying institution is appropriate. If appropriate, the Director will deny institution. If discretionary denial is not appropriate, the Director will refer the petition to a three-member panel of PTAB judges who will evaluate whether a proceeding should be instituted or whether a given petition should be denied on the merits.
2. The USPTO will permit parties to file separate briefing on requests for discretionary denial of institution. Patent owners’ briefs on discretionary denial—which carry a maximum word allowance of 14,000 words—must be filed within two months of the date on which the PTAB enters a Notice of Filing Date Accorded. Petitioners’ opposition briefs on discretionary denial—which carry a maximum word allowance of 5,600 words—must be filed no later than one month after the patent owner files its brief.
3. The parties are permitted to address all relevant considerations that may bear on the Director’s discretion, and the Director will also consider the ability of the PTAB to meet its overall workload obligations in connection with discretionary denial considerations. These considerations include, but are not limited to, the factors outlined in the PTAB’s Fintiv,[1] General Plastic,[2] and Advanced Bionics[3] cases.

In view of the PTO’s issuance of the March 26, 2025 memorandum, as well as the February 28 memorandum, it is expected that the PTAB will more frequently exercise its discretion to deny institution of AIA trials. Additionally, under the new protocol, the PTAB Director will have a more significant role in determining institution decisions moving forward. This change is also expected to result in additional up-front costs for both parties, as both petitioners and patent owners will submit more robust briefing on discretionary denial. 

Honigman continues to closely monitor all activities and announcements from the USPTO. If you have questions about the USPTO’s March 26^th memorandum or other changes at the USPTO, please contact one of Honigman’s Intellectual Property Attorneys.

[1] Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020).

[2] General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Nov. 14, 2017).  

[3] Advanced Bionics, LLC v. MED-EL Elektromedizinishe Gerate Gmbh, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020).