Post Grant Pulse September 2025

Discretionary Denial Update – Arguments that are helpful in avoiding discretionary denial include 1) material error by the Examiner during prosecution, and 2) previous finding that a related patent is invalid.

Example 1: Petitioner avoided discretionary denial in part because the prior art considered by the Examiner disclosed the features that the Examiner said were missing.

Example 2: Petitioner avoided discretionary denial in part because the Examiner allowed the challenged claims, but then later rejected similar claims in a related application.

Example 3: Petitioner avoided discretionary denial in part because PTAB previously found a related patent with similar claims unpatentable.

Director Review Update – Director may reconsider an earlier discretionary denial if circumstances change in the related district court litigation.

Example: The Director vacated a previous discretionary denial in part because the district court litigation involving the challenged patent was dismissed with prejudice after the discretionary denial decision.

Other Updates

1. New discretionary denial website: https://www.uspto.gov/patents/ptab/interim-director-discretionary-process.
2. Discretionary denial briefing limited to 20 pages (not 14,000 words) for requests due on or after September 1, 2025.

Authored by Robert Weinschenk.