A High Bar for Discretionary Denials in Post-Grant Reviews
In the precedential decision Multi-Color Corp. v. Brook & Whittle Ltd., the USPTO Director declined to use discretionary authority under § 314(a) and deny institution of a post-grant review (PGR) even though parallel district court proceedings were underway. The petition for review was filed within the nine-month post-grant review window of 35 U.S.C. § 321(c) and the Director emphasized that these types of challenges are favored because they are close in time to examination and occur before expectations in the patent right are strongly settled.
The Director also found that the petitioner’s status as a non-party in the concurrent district court proceedings, combined with their highly persuasive arguments as to why discretionary denial was inappropriate, heavily outweighed the impending proceedings. The Director thus referred the petition for institution to the Patent Trial and Appeal Board.
This case highlights that PGRs may be less prone to discretionary institution denials by the Director because there are fewer policy concerns related to settled expectations.