USPTO Returns Merits-Based Institution Decisions for Patent Trials to PTAB Panels Effective November 16
In a memorandum issued on November 10 to the judges of the Patent Trial and Appeal Board (PTAB), U.S. Patent and Trademark Office Director John Squires and General Counsel John Duffy announced that, effective November 16, merits-based institution decisions for inter partes review (IPR) and post-grant review (PGR) proceedings will return to three-judge PTAB panels, ending the period in which the Director personally decided all institution petitions.
Under the new process, petitions first go through the Director's screening on discretionary, non-merits considerations, including public-interest factors such as American manufacturing and small business concerns. Petitions that pass that screen then go to a three-judge panel, which decides institution on the merits on the Director's behalf and briefly states the merits considerations it found important. If a trial is instituted, a different panel, with no overlapping judges, will conduct it, to avoid any appearance of prejudgment.
The memorandum also tightens the merits standard through five illustrative guidelines. Among them, the Board will deny institution if the petitioner fails to make the requisite showing for a substantial majority of the challenged claims, and close calls resolve in favor of denial.
The change applies to IPR and PGR petitions that have not yet received a notice referring them for merits review. It follows Director Squires's October 2025 decision to centralize all institution decisions in the Director's office. By September 2026, only 15 percent of petitions were being denied on discretionary grounds while 85 percent were referred for merits review, and PTAB judges had assisted on more than 325 merits-based decisions over the past year. The Director will continue to review discretionary considerations to set overarching PTAB policy.
(Source: U.S. Patent and Trademark Office)
Source: U.S. Patent and Trademark Office
Published by GSM · USA (original Chinese edition)
Photo: 图：美国专利商标局总部（弗吉尼亚州亚历山德里亚）内的发明家名人堂。CC BY-SA 4.0，经 Wikimedia Commons，本图已裁为 16:9。 / Photo: The Inventors Hall of Fame inside the headquarters of the U.S. Patent and Trademark Office in Alexandria, Virginia. CC BY-SA 4.0, via Wikimedia Commons; cropped to 16:9.
