Litigation partners Catherine Nyarady and Crystal Parker’s latest intellectual property litigation column, “Acting USPTO Director Sheds Light on New Bifurcated Discretionary Denial Process With Recent Decisions,” appeared in the July 8 issue of the New York Law Journal. The authors discuss recent significant temporary procedural changes to how the U.S. Patent and Trademark Office (USPTO) and Patent Trial and Appeal Board (PTAB) will evaluate petitions for inter partes review and post-grant review. A recent memorandum issued by the interim USPTO director provides practical guidance for the new discretionary denial procedures, indicating that considerations of PTAB efficiency—such as timing of decisions, likelihood of a stay, investment of the parties in parallel proceedings and the timeliness of the challenge—are critical to the discretionary analysis. While these factors can be overcome through equitable arguments or the PTAB’s expertise, consideration should be given to the potential for discretionary denial. Litigation associate Thomas Macchio and summer associate Nathaniel Kavaler assisted in the preparation of this column.
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