The Director now decides discretionary denial first, and how long the claims have been in force can count against review

Memorandum, "Interim Processes for PTAB Workload Management" (March 26, 2025), from Coke Morgan Stewart, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office, to All PTAB Judges

The Acting Director, Coke Morgan Stewart, adopted temporary processes for deciding whether to institute inter partes review and post-grant review, stating that they were needed so that the Patent Trial and Appeal Board continues to meet its statutory obligations on ex parte appeals while keeping capacity for trials under the America Invents Act. Institution is now bifurcated. The Director, in consultation with at least three Board judges, first decides whether discretionary denial is appropriate; only a petition that survives goes to a three-judge panel for the merits and the other statutory requirements. The patent owner may file a discretionary-denial brief of up to 14,000 words within two months of the notice according a filing date, and the petitioner may oppose within one month. Beyond existing Board precedent, including Apple Inc. v. Fintiv, Inc., the Director may consider whether the Board or another forum has already adjudicated the claims, changes in law, the strength of the unpatentability challenge, the extent of the petition's reliance on expert testimony, "settled expectations of the parties," such as the length of time the claims have been in force, and compelling economic, public health or national security interests, as well as the Board's workload and its pendency goals for ex parte appeals. The memorandum follows the Office's February 28, 2025 rescission of the June 2022 memorandum that had limited denials under Fintiv.

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