On March 26, 2025, the U.S. Patent and Trademark Office released a memorandum introducing a new interim process for handling institution decisions in inter partes reviews (IPRs) and post-grant reviews (PGRs). The Office just released a set of FAQs addressing questions about the memo.

The March 26 Memorandum (Memo) introduced a bifurcated framework for institution decisions that separates discretionary considerations from the substantive merits of a petition. This change is intended to streamline decision-making at the Patent Trial and Appeal Board (PTAB) while giving parties a formal opportunity to address discretionary denial factors directly to the Director. 

Under the Memo, institution decisions are bifurcated into two phases. First, the Director, in consultation with at least three senior PTAB judges, evaluates whether institution should be denied based on discretionary grounds—such as those outlined in the Fintiv and General Plastic line of cases. If the Director determines that discretionary denial is not warranted, the matter proceeds to a PTAB panel, which evaluates the merits and other non-discretionary issues raised in the petition and preliminary response. This structure allows for early resolution of threshold issues while preserving the Board’s focus on statutory and evidentiary matters.

Timing is Everything

The bifurcated process applies to proceedings where the patent owner’s preliminary response deadline occurs after March 26, 2025. Patent owners who wish to argue for discretionary denial must file a separate discretionary denial brief within two months of the PTAB’s Notice of Filing Date Accorded. Petitioners may file a corresponding opposition one month later—on the same day the patent owner’s preliminary response is due. If no discretionary denial brief is filed, the case bypasses the Director and goes directly to a Board panel for a merits-based institution decision. The Director, after considering the petition, discretionary denial brief, opposition brief, and preliminary response (POPR), will issue a decision on discretionary considerations within 1 month of the last relevant paper filed.

There are a few important points on timing clarified by the FAQs. First, while parties may always submit early briefing, the parties may not stipulate to later due dates for filing the discretionary considerations briefing. Earlier filing of a discretionary denial brief does not alter timing for the petitioner’s opposition, which remains one month from the due date of patent owner’s brief, or of the Director’s decision. Second, if the patent owner filed its POPR, or the deadline for filing a POPR passed, on or before the Memo issued on March 26, 2025, the bifurcated process is not available, and a Board panel will proceed as it would have before the Process Memorandum issued.

Speak Now or Forever Hold Your Peace (Mostly)

If the patent owner fails to timely file a discretionary denial brief, the Director will not issue a decision on discretionary considerations. Instead, the case proceeds to directly to phase 2 for consideration of non-discretionary issues by the Board panel. 

Importantly, the Office emphasizes a strict separation of issues between the two phases. Once the Director determines that discretionary denial is not appropriate, the Board panel will not consider papers filed by parties relating to discretionary considerations. Arguments related to discretionary denial must be confined to the discretionary denial brief and corresponding opposition. The FAQs make it clear that neither the Director nor the Board panel will consider discretionary-denial arguments raised in the POPR. 

Conversely, merits-based arguments may only appear in the petition, preliminary response, and any authorized replies or sur-replies. The Board will not consider arguments that appear in the wrong phase of briefing, absent extraordinary circumstances. But if the petition fails to present sufficient challenges that meet the reasonable likelihood standard, the Board panel may address discretionary considerations in phase 2.

Here’s the exception, because the strengths/weaknesses of the merits are relevant, the parties may reference arguments in the petition and evidence of record. The parties’ discretionary briefing may also address claim construction if it is relevant to the discretionary considerations.

Yes Do-Overs!

Finally, the FAQs clarify how rehearing and Director Review will operate under the new system. Requests for rehearing on discretionary denials must be directed to the Director, while rehearing requests involving only the merits or other non-discretionary issues must be directed to the Board panel. When a request raises both discretionary and non-discretionary issues, the party must file a request for Director Review. For institution denials based on discretion, the party has 30 days to request rehearing or Director Review. 

In sum, the USPTO’s interim guidance establishes a more structured approach to addressing discretionary-denial considerations at the PTAB. The bifurcated process gives patent owners a dedicated opportunity to present threshold arguments directly to the Director while allowing the Board to focus on merits once those threshold issues are resolved. Practitioners are advised to pay close attention to timing, briefing format, and the scope of issues raised to ensure compliance with the new requirements. The USPTO signaled that these FAQs may evolve with practice, so parties should continue to monitor for updates.

For further details, patent professionals are encouraged to review the Memorandum and FAQs and consider their influence your current and future IPR, PGR and/or litigation strategies and tactics.