The “Fix” Feels Confusing: The USPTO’s New Bifurcated Process for Patent Reviews
The United States Patent and Trademark Office (USPTO) recently changed how it decides whether to move forward with patent challenges known as inter partes reviews (IPRs). Instead of a single panel deciding both discretionary and merit questions, Acting Director Coke Morgan Stewart (Stewart) created a bifurcated, two-step process. First, the Director decides whether to deny a case based on discretionary factors. If the case is approved, the Patent Trial and Appeal Board (PTAB) panel will then evaluate the merits.
Although designed to streamline review and manage workload, the new system has instead generated conflicting guidance and expanded discretion. Some of the new factors tend to favor patent owners, while others favor petitioners. Without clearer guidance, both sides are left uncertain: patent owners cannot reliably gauge whether their rights will hold, and petitioners cannot predict when their challenges will be heard. Clearer instruction should be given by the USPTO.