PTAB Precedential Designations Highlight Discretionary Considerations on PGR Petitions, Joinder Requests

"On Friday, the U.S. Patent and Trademark Office designated a series of Patent Trial and Appeal Board (PTAB) decisions on discretionary denial requests as either precedential or informative, highlighting considerations important for both inter partes review (IPR) and post-grant review (PGR) proceedings. In particular, precedential designations underscored the favored status of patent validity challenges through PGR petitions, and clarified important timing factors when determining whether to grant petitioner requests for joinder."

"Discretionary denials of PTAB trials have been a focal point for the USPTO under the Trump Administration since last March, when then-USPTO Acting Director Coke Morgan Stewart established a new workload management framework at the PTAB under which she personally decided requests for discretionary denials of IPR and PGR petitions. Last summer, remarks made by Acting Director Stewart at the Intellectual Property Business Congress (IPBC) Global established the USPTO's clear preference for PGR petitions, which must be filed within nine months of the patent's issue date."

"Timing considerations have emerged as a major factor for PTAB discretionary denial decisions into the early tenure of USPTO Director John Squires. Before Director Squires was confirmed by the U.S. Senate, a patent owner's settled expectations, which could be established as early as six years after the patent's issue date, was cited in a string of PTAB discretionary denial rulings as a significant factor favoring denial."

The U.S. Patent and Trademark Office designated several Patent Trial and Appeal Board decisions on discretionary denial requests as precedential or informative, emphasizing timing in IPR and PGR proceedings. Precedential designations favored patent validity challenges via PGR petitions and clarified timing factors relevant to joinder requests. A new PTAB workload-management framework centralized discretionary-denial decisions and reflected a preference for PGRs, which must be filed within nine months of patent issuance. Timing remained a major consideration into the early tenure of USPTO Director John Squires. Patent-owner settled expectations, sometimes established as early as six years after issue, have supported denial; petitioner settled expectations have been cited in fewer cases.

Read at IPWatchdog.com | Patents & Intellectual Property Law