On October 17, 2025, John Squires, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), issued a significant memorandum with subject line “Director Institution of AIA Trial Proceedings.” The memorandum explains that starting October 20, 2025, the Director himself will determine whether to institute inter partes review (IPR) and post-grant review (PGR) proceedings and will generally make his determination known to parties through summary orders.
The memorandum was accompanied by a letter from the Director explaining his reasoning for revoking the delegation of the institution process to the Patent Trial and Appeal Board (PTAB). The Director identified four intentions behind this change, including what he stated as elimination of the appearance of self-interest, removing a perceived “referral-signal bias,” enhancing transparency and public trust, and re-aligning duties and responsibilities of the Director to be accountable for the threshold determination of institution. The Director expressed concern that there may be the appearance that the PTAB is incentivized to grant institution in order to fill out its own docket, indicated that the current bifurcated process for preliminary consideration of discretionary denial “inadvertently produced extraordinarily high institution rates” in referred cases, and stated that returning institution decisions to the Director “re-aligns [the USPTO’s] procedures with the clear language and intent of the [AIA] and returns accountability for such decisions to the Director.”
Background
On March 26, 2025, then-Acting Director of the USPTO Coke Morgan Stewart issued a memorandum that made significant changes to how the USPTO considers whether to institute IPR and PGR proceedings. Under this earlier memorandum, the Director considered whether to discretionarily deny institution and, if the Director determined discretionary denial is not warranted, the petition was referred to a three-member panel of the PTAB to consider whether to institute on the merits. Our full summary of the March 26 memorandum is available here: USPTO Issues Memo on Interim Process for PTAB Discretionary Denial Evaluation.Overview of Changes to the Institution Process for IPR and PGR proceedings
Pursuant to the October 17 memorandum, as of October 20, 2025, the Director will determine whether to institute all IPR and PGR proceedings. In consultation with at least three PTAB judges, the Director will review “discretionary considerations, the merits, and non-discretionary considerations” to determine whether institution “is appropriate on at least one ground for one challenged claim.” If the Director so determines, the Director will issue a “summary notice” to the parties granting institution, and the IPR or PGR will then be referred to a three-member panel of the PTAB to conduct the trial. If instead the Director “determines that institution is not appropriate, whether based on discretionary considerations, the merits, or other non-discretionary considerations,” then “the Director will issue a summary notice denying institution.”
The memorandum does not specify what the contents of the “summary notice” will be. However, the memorandum provides that “[i]n proceedings involving novel or important factual or legal issues, the Director may issue a decision on institution addressing those issues.” In addition, when appropriate because of, for example, complex claim construction issues, priority analysis or a real party in interest determination, the memorandum provides that the “Director may refer the decision on institution to one or more members of the PTAB.”
The new memorandum supersedes the existing interim process to the extent that as of October 20, routine institution decisions will be limited to summary notices, and merits-based decisions on whether to institute will not be referred to a three-member panel of the PTAB. The memorandum states that the existing briefing process—i.e., for requesting and opposing discretionary denial and for providing a patent owner preliminary response to the petition—will remain the same, and that existing decisions under the interim process regarding discretionary denial provide “substantial guidance” as to how the Director will evaluate discretionary considerations.
All petitions referred to the PTAB for consideration on the merits and non-discretionary considerations under the interim processes before October 20, 2025, will remain with the PTAB.
