PTAB/USPTO Update - October 2026

PTAB/USPTO Update - October 2026

Client Alert

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USPTO News 

  • On September 11, the Patent Trial and Appeal Board (PTAB) announced the addition of two templates with companion guidance (and a glossary) that will now be available for America Invents Act (AIA) trial proceedings. One template is for an AIA trial petition, and the other template is for the patent owner response and patent owner preliminary response. The announcement stated that “[t]he templates set forth the typical parts of each type of filing and the companion guidance explains the information to be provided in each part.”
  • On September 15, the USPTO discussed Director Squires’ delivered remarks at the University of Southern California Gould School of Law 3rd Annual Washington D.C. Conference. Director Squires’ remarks included discussions of the historical importance of IP and innovation to the United States. Director Squires also referenced a federal court of appeals decision on trademarks (referring to Clemente Props., Inc. v. Pierluisi-Urrutia, 165 F.4th 1 (1st Cir. 2026)), stating that the court “held that trademarks lack the full set of constitutional protections afforded physical property rights because trademarks are “intangible property.” Director Squires noted that the case was on appeal to the Supreme Court and described the case as “a matter of substantial interest to many people in my office” and that maintaining “full constitutional protections as property” was “essential to a modern, 21st-century economy.”
  • On September 21, the USPTO announced that it selected the University of South Florida for its latest community engagement office in the Southeast Region. The selection follows a February 2026 request for comments seeking input regarding the locations for one or more community outreach offices in the Southeast Region.
  • On September 22, the Director announced the return of the Director’s Blog to discuss updates regarding the “Learning from Outcomes to Optimize Patents” (LOOP) program. LOOP was launched earlier in the year to leverage experiences and expertise of PTAB judges and PTAB proceedings to improve patent examination quality. The Director discussed the program’s successes and next steps. 
  • On September 22, the USPTO published Director Squires’ remarks as delivered regarding the economic impact of Bayh-Dole. Director Squires’ statement was titled “The Economic Impact of Bayh-Dole: American Ingenuity and Economic Handshakes (Or, Good Things Happen When You Move Breakthroughs Closer the Market…)” and highlighted the Bayh-Dole Coalition’s release of the new report, “Measuring the Impact of American Innovation.” 
  • On September 22, the USPTO announced that Jonathan Spencer was being appointed to the role of Chief Artificial Intelligence Officer for the USPTO. Spencer will oversee artificial intelligence and emerging technology matters within the agency. 
  • On September 22, the USPTO announced that it will participate in the World Intellectual Property Organization (WIPO)’s Global IP Assignment Platform (GIPAP) pilot program. GIPAP is a centralized, standard platform for filing and tracking intellectual property (IP) assignments. The USPTO had previously convened what it described as a “‘tiger team’ to analyze the results of a WIPO feasibility study and to examine the GIPAP prototype.” 
  • On September 22, the USPTO published updated disclaimer forms, including adding four new forms for terminal disclaimers under 37 CFR 1.321(d) based on a joint research agreement as well as updating multiple other forms.
  • On September 29, the USPTO published an updated memorandum regarding Subject Matter Eligibility Declarations (SMEDs) under 37 CFR 1.132. The memorandum supplements the April 30, 2026 Director Memorandum. The September 29, 2026 memorandum highlights a flowchart for reviewing SMEDs and discusses best practices for applicants and patent practitioners, including formalities such as when to file and what types of acknowledgements/statements must be included and how to evaluate evidence contained in an SMED.
  • On September 29, the USPTO published Director Squires’ prepared statement to the U.S. Senate Committee on the Judiciary, Subcommittee on Intellectual Property. The statement highlights many of the efforts that the USPTO has made in the last year and thanks Congress for extending the USPTO’s fee-setting authority to December 11.

Final Rules

  • There are no new final rules.

Interim Rules

  • There are no new interim rules.

Proposed Rules

  • There are no new proposed rules.

General Notices

  • The USPTO announced that, as part of the USPTO’s Pre-Appeal Brief Conference Pilot Program, “[e]ffective on the issuance of this notice, the pre-appeal brief conference panel may further comprise a Patent Trial and Appeal Board (PTAB) Administrative Patent Juge (APJ) as a third panelist.” The Pre-Appeal Brief Conference Pilot Program provides applicants “the option to request a review of the legal and factual bases of the rejection(s) in the application prior to the filing of an appeal brief.” Update to Panels for Pre-Appeal and Appeal Conferences (September 10, 2026).
  • The USPTO has updated the procedure for filing patent applications in DOCX format through patent center. Patent Center will no longer convert DOCX files into PDF files during pre-submission process, but instead convert directly to TIFF files. Update to Procedure for Filing Patent Applications in DOCX Format through Patent Center, 1550 OG 121 (August 3, 2026).

Legislation

  • On September 30, Sen. Ashley Moody introduced S.5610, titled “A bill to amend title 35, United States Code, to limit the ability of persons that pose a threat to national security to receive and enforce patents, and for other purposes,” in the Senate.

PTAB Decisions

  • New Precedential PTAB Decisions
    • There are no new precedential PTAB decisions
  • New Informative PTAB Decisions
    • There are no new informative PTAB decisions
  • New Director Review Decisions
    • Samsung Electronics Co., LTD. v. Maxell, LTD., IPR2024-00906, IPR2024-00907
      • Order Granting Director Review and Reversing-in-Part the Final Written Decisions – Paper 51 (Squires September 9, 2026) (agreeing with dissent and reversing Board’s conclusion that Petitioner showed unpatentability of claims after asserted reference describing a limitation was found not publicly available).
    • Yealink (USA) Network Technology Co., LTD. v. Barco N.V., IPR2025-00491
      • Order delegating Director Review to a Delegated Rehearing Panel (DRP) – Paper 62 (Squires September 23, 2026) (delegating to DRP where related proceedings had all previously been delegated to a DRP).
    • Innoscience America, Inc. v. Infineon Technologies Americas Corp., IPR2025-00175 
      • Order delegating Director Review to a Delegated Rehearing Panel (DRP) – Paper 33 (Squires September 9, 2026) (delegating to DRP to “determine whether the Board misapprehended or overlooked any issues” in a Final Written Decision regarding the appropriate construction of a term and disclosure of that term in the prior art).
    • Nearmap US, Inc. v. Eagle View Technologies, Inc., IPR2022-00734
      • Order Vacating Decision Granting Institution and Denying Institution of Inter Partes Review – Paper 57 (Squires September 23, 2026) (finding that “maintaining this IPR would be an inefficient use of Office resources” based on parties’ settlement and a Final Written Decision of no unpatentability in a previous IPR that was affirmed by the Federal Circuit).

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