The U.S. Patent and Trademark Office (USPTO) has rolled out a new system that reshapes how patent challenges are reviewed. If your business holds patents or plans to challenge one, these changes matter. Let’s break down what’s new and why hiring a skilled patent attorney has never been more important.
What Is the USPTO’s Discretionary Denial Process?
In March 2025, the USPTO introduced a bifurcated process for reviewing patent challenges. Under this new system:
First, the USPTO Director—alongside senior Patent Trial and Appeal Board (PTAB) judges—reviews whether to deny a petition for discretionary reasons.
If the case passes that stage, a separate panel of judges then reviews the challenge on its technical and legal merits.
This two-step process increases the likelihood that a patent challenge may be rejected early—before full review. That’s a huge shift, and it requires a smarter legal strategy.
Why It Matters to Patent Owners and Challengers
This new framework aims to improve efficiency, but it adds risk. The PTAB can now block even valid challenges if they overlap too much with district court litigation or rely heavily on certain types of evidence.
Whether you’re defending your patent or filing a challenge, this creates a strategic fork in the road. The team at Thrive IP® can help you choose the right path.
Key Changes That Could Affect Your IP Strategy
- No More Timeline Manipulation
The USPTO has set a fixed schedule for all opposition briefs. Patent owners can’t fast-track discretionary denials by filing early. This makes deadlines more predictable—but removes a potential tactic from both sides. - Expert Testimony Now a Double-Edged Sword
Overusing expert testimony could trigger a denial. The PTAB now says complex expert disputes belong in federal court. But too little expert input can weaken your case. Our attorneys can help you strike the right balance. - Stipulations Won’t Always Shield Petitioners
In the past, challengers could avoid denial by agreeing not to make the same arguments in court. That’s no longer a guarantee. Especially when court arguments involve “system art” like physical products. Thrive IP® helps you coordinate arguments across all venues. - No Request = No Denial? Not Always
If a patent owner doesn’t ask for discretionary denial, the petition usually moves forward. But if the petition appears weak, the Director may still deny it. Our attorneys will help you build a strong petition from the start. - New Review Panels Add Another Layer
Two different sets of judges will now evaluate your case—one for denial and another for merits. That means your arguments must be tailored for each audience. We help you craft a strategy that speaks to both.
What This Means for Thrive IP® Clients
If you’re a patent owner, the new process gives you a stronger voice early on. You can make your case for discretionary denial in a dedicated brief. You may avoid expensive litigation and protect your patent faster.
If you’re challenging a patent, your strategy needs to change. The new rules demand careful coordination of court and PTAB arguments, evidence selection, and timing.
At Thrive IP®, our team guides you through this process with precision. We can help you avoid pitfalls, maximize your chances of success, and protect your innovations or investments.
FAQs: The New USPTO Discretionary Denial Process
What triggers a discretionary denial?
The USPTO may deny petitions if a district court trial will finish first, if the same evidence was already reviewed, or if the case involves too much expert conflict.
Is expert testimony still helpful?
Yes—but it must be concise and focused. Overuse can lead to denial. The best testimony explains technical terms, not complex disputes.
Are stipulations still useful?
Sometimes. But they’re no longer enough to avoid denial—especially in cases involving overlapping “system art.”
Can the USPTO deny a petition without a request?
Usually no. But if the petition is weak, the board may still deny it to conserve resources.
Do I need a patent attorney for this?
The new process is complex and strategic. Thrive IP® attorneys know how to structure winning briefs and navigate both stages of review.
Thrive IP®: Your Patent Protection Partner
The USPTO’s new rules are a call to action. You need a legal team that understands the latest PTAB procedures, stays ahead of USPTO policy changes, and can defend your innovations or challenge competitors’ patents effectively.
At Thrive IP®, we offer clear advice, proven results, and deep technical and legal expertise. Don’t leave your intellectual property to chance.
📞 Contact Thrive IP® today to schedule a consultation: