PTAB Extends Deadline for Patent Owners to Request Director Review

Need to know

In a precedential decision, the Director of the USPTO has extended the deadline to request Director Review of a decision to institute trial in a PTAB proceeding from 14 days to 30 days, as well as clarified exceptional circumstances under which that deadline can be further extended. The Director’s decision provides additional time for patent owners to challenge institution, essentially giving patent owners the same amount of time as petitioners to challenge non-institution.

U.S. Patent and Trademark Office (USPTO) Director John Squires issued a sua sponte precedential Director Review decision in Light & Wonder, Inc. v. Evolution Malta Limited, IPR2025-01072, Paper 30 (PTAB Jun. 22, 2026), extending the deadline to request Director Review of a decision to institute trial in a Patent Trial and Appeal Board (PTAB) proceeding from 14 days to 30 days.

In Light & Wonder, the PTAB had issued a decision granting inter partes review (IPR) in the proceedings at issue. Following institution, however, the PTAB allowed the patent owner to file a motion to terminate the proceedings due to a decision in a co-pending district court action finding the claims at issue in the IPR proceeding invalid under 35 U.S.C. § 101. The PTAB denied the motion on the grounds that it lacked the authority to terminate the IPRs for discretionary reasons. The patent owner then sought guidance from the USPTO on how to request Director Review of the PTAB’s decision, as denial of a motion to terminate is not one of the expressly permitted bases for seeking Director Review.  

The Director explained that, in some cases, circumstances change after the deadline to seek Director Review has passed but before trial has “progressed meaningfully.” And while the Director typically has initiated sua sponte Director Review to address such cases, the decision recognizes that party-initiated review is a more efficient process and that parties should be permitted to seasonably raise issues affecting institution. The Office therefore waived the time period under 37 C.F.R. § 42.75(c)(1), extending the deadline to request Director Review of an institution decision from 14 days to 30 days.  

In exceptional circumstances, that deadline can be further extended. Such exceptional circumstances may include:  

• Dismissal of all or substantially all claims in a co-pending litigation;
• Findings of fact or conclusions of law that render all or substantially all challenged claims invalid in litigation; and
• Violation of a Sotera stipulation.  

Takeaways

• Director Squires has waived the rule requiring a patent owner to file a request for Director Review challenging institution within 14 days. Both patent owners and petitioners now have 30 days to challenge non-favorable decisions on institution.  
• The Director has also signaled a receptiveness to consider “changed circumstances” post-institution even after 30 days, so long as the America Invents Act trial has not “progressed meaningfully.”  
• While the Director has not set forth a bright-line rule for what constitutes meaningful progression, petitioners should be aware that requests for Director Review challenging institution may be extended based on this decision.