Overview
Discretionary denial practice at the USPTO has undergone significant shifts in recent months. Procedural changes implemented in the second half of 2025 have reshaped how the Patent Trial and Appeal Board (PTAB) approaches institution decisions, creating a framework that continues to evolve. Against this backdrop, Steptoe's Intellectual Property Group has engaged in robust internal discussions evaluating both the benefits and drawbacks of the current system. This post presents several of those perspectives in a point–counterpoint format.
Point: Introduces uncertainty into post-grant review outcomes
Counterpoint: Advances the statutory goal of uniformity and overall judicial efficiency
- Although the new system aims to streamline review and reduce both APJ workload and the potential for inconsistent analyses, its implementation has created uncertainty for petitioners. Under the streamlined process, the Director now issues a single notice identifying which post‑grant proceedings passed discretionary‑denial review and which passed on the merits—without substantive explanation. As a result, petitioners face ambiguity about which factors influenced the outcome.
- After the initial adjustment to the new procedures, the long‑term structure is designed to increase consistency. The AIA envisioned IPRs as a second forum for efficient adjudication, but over time they became a strategic leverage tool—especially for large technology companies pursuing parallel challenges. The updated framework positions IPRs as a more efficient and predictable second (though not secondary) dispute‑resolution forum.
Point: Allows potentially invalid patents (i.e., "bad patents") to remain in force
Counterpoint: Curtails strategic gamesmanship in the post-grant process
- One change implemented by the Director considers a patent owner’s purported settled expectations when determining whether to apply discretionary denial. Because petitioners are now expected to bring challenges soon after issuance, invalid patents may remain enforceable simply because they were not challenged early enough. Too many patents are issued with overbroad or poorly draft claims, and it is now the onerous burden of private companies to keep watch.
- Patent monopolies are granted in exchange for disclosure, and potential infringers have incentives to monitor newly issued patents and act promptly—through ex parte or inter partes processes. The updated framework curbs strategic behaviors such as repeatedly testing multiple claim constructions across forums. Parties must now develop and commit to technical interpretations earlier in the process.
Point: Weakens confidence in the US patent system
Counterpoint: Strengthens and increases the value of US Patents
- Frequent changes to post‑grant procedures within a short timeframe have left some challengers uncertain about the future of PTAB practice.
- issued patents are entitled to a presumption of validity, and the burden remains on challengers. By discouraging inconsistent positions and reducing the use of IPRs as a strategic tool, the current system enhances the value of well‑drafted patents—encouraging investment in innovation and supporting small companies that rely on strong patent protection.
As post‑grant procedures continue to evolve, Steptoe will monitor developments closely and provide practical guidance for both Patent Owners and Petitioners. Representing stakeholders on both sides of PTAB disputes across a wide range of technologies gives us a balanced, practical perspective on how discretionary‑denial practice impacts all participants in the patent system.
