Authored by: Michael S. DeVincenzo , Charles Wizenfeld , Andrea Pacelli and Li Zhaocheng
Inter partes review (IPR) is a post-grant procedure administered by the PTAB to review the patentability of issued U.S. patents. Under 35 U.S.C. § 314(d), the decision whether to institute IPR is committed to the USPTO Director’s discretion and is final and nonappealable, limiting judicial oversight. In 2022, the USPTO issued interim Fintiv/Sotera guidance instructing the PTAB that it generally should not deny IPR institution based solely on parallel district court litigation where a petitioner submitted a stipulation agreeing not to pursue in district court any unpatentability grounds that could be raised in IPR. Following the presidential election of Donald Trump and subsequent leadership changes at the USPTO, new discretionary denial procedures were introduced under which the Director has expanded discretionary-denial practice and increased centralized control over institution determinations, that he personally evaluates institution factors and can elect to deny institution by his own discretion.