PTAB Clarifies Interim Workload Management Process, PTAB Litigation Blog
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On April 17, 2025, following Acting Director Coke Morgan Stewart’s memorandum announcing a new interim process to manage the workload of all PTAB judges, the USPTO held a Boardside Chat outlining the new bifurcated process that will apply to inter partes review (IPR) and post-grant review (PGR) proceedings.
The Boardside Chat reiterated that the Director, in consultation with at least three other PTAB judges, will determine whether discretionary denial of institution of an IPR or PGR is appropriate. As we previously noted, decisions on whether to institute a trial will be bifurcated between (i) discretionary considerations and (ii) merits and other non-discretionary considerations. Shortly after, the USPTO published a Frequently Asked Questions (FAQ) page to facilitate briefing. The USPTO explains that the page may be updated after some experience with the interim processes, so practitioners are encouraged to check back frequently for updates.
The FAQ page is organized into several categories to clarify aspects of the interim processes. “Availability and timing” addresses when the bifurcated process applies and related deadlines. “Procedures/processes” explains how the Director and Board panels handle discretionary denial and institution decisions. “Briefing requirements” sets out word limits, permissible content, and evidentiary guidelines for discretionary denial briefs. “Requests for rehearing by the Board panel or Director Review” delineates how and when parties may seek further review. “Conflicts of interest” outlines USPTO policies for recusals in these proceedings. “New paper types for discretionary denial briefing” provides instructions for filing briefs in the P-TACTS system.
While the FAQ page made several important clarifications, two of these stand out with regard procedure and process:
- The interim process will not establish a formal time limit on Sotera stipulations. The USPTO still recommends that petitioners file Sotera stipulations “as soon as practicable” to allow patent owners to address the stipulations in their discretionary denial brief. If filed after the Director issues a decision on discretionary considerations, the Director will consider whether the stipulation materially reduces overlap between proceedings. Stipulations may not materially reduce overlap in instances where a petitioner is relying on corresponding system art in a co-pending proceeding and/or other invalidity theories.
- A petitioner should not preemptively address discretionary denial issues in its petition. Issues related to 35 U.S.C. § 325(d), parallel proceedings, parallel petitions, serial petitions, or any other discretionary issues should be raised in a petitioner’s opposition to a patent owner’s discretionary denial brief.
Takeaways: The PTAB’s Boardside Chat reiterated the new bifurcated approach that applies during the interim processes issued on March 26, 2025. The subsequent publication of the FAQ page provides helpful provisions for navigating these interim processes, including guidance that petitioners should submit Sotera stipulations early enough for PTAB to consider before issuing a decision for IPR, and that petitioners should not preemptively address discretionary denial issues in their petitions.
* Aeden Bempong, a Summer Associate in Jones Day’s Washington Office assisted in the preparation of this blog.
