USPTO Implements Bifurcated Briefing for AIA Proceedings

On March 26, 2025, the USPTO issued a new interim process for institution of AIA proceedings that bifurcates consideration of inter partes review (IPR) and post-grant review petitions (PGR) into (i) a discretionary denial phase, and (ii) a merits or non-discretionary phase. 

Under these new procedures, petitioners may choose to not address discretionary denial issues in the petition. Instead, discretionary denials will be handled through separate briefing. Once the PTAB enters a Notice of Filing Date, the patent owner will have two months to file a brief arguing for discretionary denial. The petitioner then has one month after the patent owner’s brief to file an opposition. Discretionary denial briefs—opening and opposition—can be up to 14,000 words. If reply briefs are permitted (for good cause), they will be limited to 5,600 words. 

The Director, along with a panel of at least three PTAB judges, will consider the discretionary denial briefing first. If discretionary denial is deemed appropriate, the Director will issue a decision denying institution. If it is not deemed appropriate, then the petition will be referred to a panel of the PTAB to consider the merits of the petition and any other non-discretionary issues. 

These procedures will apply for any IPR or PGR proceedings “where the deadline for the patent owner to file a preliminary response has not yet passed.” If the time for filing discretionary denial briefing has already passed, the patent owner has one month from March 26, 2025, to submit discretionary denial briefing. 

This new interim process, along with the USPTO’s decision earlier this month to rescind the 2022 memorandum on discretionary denials, appears to signal the PTAB’s intent to manage its workload by issuing more discretionary denials of IPR and PGR petitions. Indeed, the new interim procedures expressly state that, during the discretionary denial phase, the PTAB will consider “the ability of the PTAB to comply with pendency goals for ex parte appeals, its statutory deadlines for AIA proceedings, and other workload needs.” Although the new procedures state that they are “temporary in nature, in part, due to the current workload needs of the PTAB,” there is no indication of how long these rules are expected to stay in place, and practitioners will need to adjust their pre-institution strategies accordingly for the foreseeable future.