USPTO Director returns to the PTAB merits-based considerations involved in making IPR and PGR institution decisions

Today, U.S. Patent and Trademark Office (USPTO) Director John A. Squires and General Counsel and Supervisory Solicitor John F. Duffy issued a memorandum announcing that, effective November 16, 2026, the Patent Trial and Appeal Board (PTAB) will, on the Director's behalf, determine whether or not to institute trial of inter partes review (IPR) and post-grant review (PGR) proceedings based on merits-based considerations.

Director Squires will continue to review non-merits-based considerations, including discretionary considerations, to set the overarching policy for the USPTO concerning the institution of IPRs and PGRs. The updated process will apply to any IPR or PGR that does not yet have a notice entered referring the case for consideration of the merits.

This updated process will allow the Director to consistently apply discretionary considerations while leveraging PTAB judges' technical expertise and experience in analyzing the merits of patentability challenges.

The decision to return to the PTAB the merits-based considerations involving institution decisions was based on several developments over the last year, including: (1) the judges' assistance and advice in over 325 decisions involving merits-based considerations; (2) the Office's LOOP (Learning from Outcomes to Optimize Patents) training program that connected lessons from AIA trial proceedings to the examining corps to improve patent quality; and (3) the Office's PTAB STRONG (Support, Training, Resources, Opportunities, Networking, and Guidance) program, which had sessions focusing on patent law at the time of the America Invents Act and the "reasonable likelihood" standard for instituting IPRs.