McCombs, Goryunov and Bowser in Reuters: USPTO Issues Proposed Rules on Discretionary Denials in Post-Grant Trials

Haynes and Boone, LLP Partners David McCombs, Eugene Goryunov and Jon Bowser authored an article in Reuters discussing the U.S. Patent and Trademark Office seeking to modify existing practices for addressing discretionary denial issues.

Read an excerpt below:

Inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) are frequent components of patent litigation disputes. The PTAB determines whether to institute a trial based on the IPR petition and the patent owner's preliminary response (POPR).

The PTAB has discretion to deny institution of an IPR for reasons other than the merits of the patentability challenges. For example, in recent years, the PTAB has discretionarily denied institution when the same petitioner previously filed an earlier petition challenging overlapping claims. It also discretionarily denies institution when a petitioner files multiple petitions against the same patent around the same time, when a district court may resolve validity issues before the PTAB would, or when the petition relies on prior art that was already considered with respect to the patent.

Discretionary denials have been controversial at the PTAB. On April 19, 2024, the USPTO issued a Notice of Proposed Rulemaking (NPRM) that seeks to modify existing practices for addressing discretionary denial issues.

The NPRM was proposed in view of stakeholder feedback to an April 2023 Advanced Notice of Proposed Rulemaking (ANPRM) containing numerous different rule modifications the USPTO was "considering," and an October 2020 Request for Comments on discretionary denials. The USPTO received over 14,000 comments in response to the ANPRM. The NPRM is interesting for what it proposes — and does not propose — in relation to the ANPRM.

Separate briefing on discretionary denial issues
The most significant change to existing practice in the NPRM is the creation of separate, pre-institution briefing on discretionary denial issues. Under current rules, petitioners and patent owners may spend significant portions of their available word count in the petition or POPR to address discretionary denial issues. The NPRM would create a separate briefing procedure so that the parties may address discretionary denial issues outside the petition or POPR.

The NPRM indicates that "most commenters [to the ANPRM] favored separate briefing to discuss discretionary denial issues," because "it would free up space in the petitions and [POPRs] to address the merits and allow more fulsome discussion of discretionary denial issues." The NPRM indicates that "[t]his separate briefing avoids encroaching on the parties' word-count limits for briefing on the merits."

To read the full article in Reuters, click here.

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