PTAB Discretionary Denials

Institution of inter partes review (IPR) or post grant review (PGR) is never guaranteed. The United States Patent and Trademark Office (USPTO) can refuse to institute review when a petition presents strong unpatentability arguments. Indeed, under current practice, the USPTO first considers whether to deny petitions on discretionary grounds, unrelated to the merits. Only those petitions that clear this initial hurdle are evaluated on their merits. Since March 2025, determinations as to whether to discretionarily deny institution no longer issue from a panel of Patent Trial and Appeal Board (PTAB) judges. Rather, such requests are now handled by the USPTO directorship, in consultation with PTAB judges. Under this regime, the rate of discretionary denials has markedly increased. Companies involved in patent disputes should be aware of the USPTO’s recent rulings and published memoranda as they provide guidance as to how petitioners can increase their changes to obtain institution and how patent owners can, conversely, reduce those odds.

In October 2025, Director Squires issued a memorandum stating that he would take over the review of the discretionary denials. This change did not mark a sharp change in discretionary denial rates. Such continuity was expected as the memorandum states that the prior decisions of then Acting USPTO Director Stewart and Acting Chief Judge Deshpande would provide substantial guidance on how he will evaluate discretionary denials. The memo also states that the Director will assume responsibility over merits-based decisions as well, in consultation with PTAB judges if necessary. The panel that would issue the final written decision would become involved only after there has been a decision to institute the IPR/PGR petition.

Changing Discretionary Denial Standards

Under current practice, the orders from Director Squires often do not discuss the reasoning behind his decisions to deny institution on the meris or to instead advance the petition to the merits stage. Regardless, prior USPTO decisions and memoranda reveal some of the key factors. Discretionary denial largely focuses on two main points:

• Stage of Parallel Litigation: When a related court or International Trade Commission (ITC) case will finish before the PTAB’s deadline to issue a Final Written Decision (FWD), the PTAB often denies review on the basis that the parallel proceeding may result in duplication of effort, additional expense for the parties, and a risk of inconsistent decisions.
• Age of Patent: Older patents (e.g., approximately six years or more from issuance), especially those in active use or enforcement, tend to warrant discretionary denial on the basis that the patent owner has settled expectations that their patent would not be challenged. By contrast, when a patent is newer (e.g., approximately five years or less from issuance), the PTAB often has found that expectations have not settled and, absent an advanced parallel litigation (see note above), usually advances the petition to a merits-based review. The USPTO has manifested its belief that early challenges support stable and predictable patent rights.

These two factors weigh heavily in the framework for many of the PTAB’s discretionary denial decisions. Other factors are also relevant, as discussed below.

Factors That Increase The Risk Of Discretionary Denial

The Director often discretionarily denies petitions when these conditions apply, especially if more than one is present:

• Advanced parallel litigation in a fast-moving court with trial before the PTAB’s deadline to issue a FWD
• Long patent life with strong commercialization, licensing or enforcement history
• Petitioner refuses to avoid repeating arguments in PTAB and court
• Petitioner repeats arguments or prior art already considered by the USPTO
• Former owners, licensees or inventors involved in the patent’s prosecution file the challenge
• Products made by patent owner are manufactured in the United States

Factors That Reduce The Risk Of Discretionary Denial

The PTAB is more likely to consider a petition on its merits, i.e. not discretionarily deny a petition when these conditions apply:

• Patent issued within the last five years
• Parallel litigation remains on hold (i.e., stayed), has no trial date or will finish after the PTAB’s deadline to issue a FWD
• Petitioner presents clear proof that the examiner made a major error during prosecution
• Patent owner has not commercialized or enforced the patent in the relevant market, even for older patents
• Products accused of infringement in a parallel proceeding are manufactured in the United States
• Petitioner is a small business
• Petitioner submits a search disclosure declaration detailing how the asserted prior art was located
• Dispute involves multiple related patents or complex technical issues

Impact On Businesses In Patent-Driven Sectors

Technology, manufacturing, biotechnology and other innovation-focused companies should plan early for the risk of discretionary denial. Patent owners should record commercialization, licensing and enforcement history. Petitioners should track litigation timelines, file stipulations when strategic and gather evidence of examiner errors. Further, for patents that are approaching their sixth year, Petitioners risk discretionary denial by delaying an IPR petition. As always, Petitioners should consider alternative means of patent challenges, including ex parte reexaminations. These changes also affect licensing talks. They influence research and development plans and competitive strategies. If the PTAB denies review, defendants may face longer and more expensive district court litigation. If the PTAB grants review, the process may resolve disputes faster and at a lower cost.

Adapting To The USPTO’s New Approach

The USPTO’s approach continues to take shape under the new procedures. Some rulings differ from prior guidance and how panels addressed the issues under the prior procedures.

This uncertainty requires careful planning and consultation with counsel that closely monitors the PTAB’s continually evolving discretionary denial stance.

Disclaimer: PV Law LLP provides this information for informational and educational purposes only. It does not create an attorney-client relationship and does not constitute legal advice. Seek advice from a qualified lawyer before taking any action based on this material.

About PV Law

PV Law has more than 100 years of combined intellectual property litigation experience. Our firm has represented clients before the PTAB, federal courts and the Federal Circuit. Our attorneys bring big-law backgrounds with a cost-effective structure for efficiency and agility. Many have lived and worked in global technology markets, gaining insight into industry priorities and innovation cycles. Our firm monitors USPTO developments closely to help clients navigate evolving patent challenges.