O Diretor do USPTO assume o controlo das decisões relativas às instituições de DPI e PGR
In what some are perceiving as the second blow of a one-two punch against patent trial proceedings conducted at the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB), USPTO Director Squires announced on Friday, October 17, 2025, that he “will determine whether to institute trial for inter partes review (‘IPR’) and post-grant review (‘PGR’) proceedings,” effective October 20, 2025. This new institution decision process builds on recent Director-level (and Acting Director-level) involvement in decisions to deny institution based on discretionary considerations, and expands Director-level involvement to institution decisions based on the merits, e.g., based on whether the “there is a reasonable likelihood that the [IPR] petitioner would prevail with respect to at least 1 of the claims challenged.”
The New “Black Box” Institution Decision Process
The USPTO’s October 17, 2025, press release promises the USPTO will host a “USPTO Hour” webinar to explain the new institution decision process, but such a program is not yet listed on the schedule. Practitioners and stakeholders will welcome further information because the Director’s memorandum does not provide much detail, other than the following points (emphasis added):
“[A]ll petitions referred to the PTAB for consideration of the merits and non-discretionary considerations under the Interim Processes prior to October 20, 2025 will remain with a three-member panel.”
The process for briefing discretionary considerations (as set forth on the Interim Director Discretionary Process webpage) and the process for briefing the merits and non-statutory considerations will remain the same.
To reach an institution decision, “the Director, in consultation with at least three PTAB judges, will determine whether to institute trials in all IPR and PGR proceedings,” based on “review of discretionary considerations, the merits, and non-discretionary considerations.”
“[I]f the Director determines that institution is appropriate on at least one ground for one challenged claim, the Director will issue a summary notice to the parties granting institution.”
“[I]f the Director determines that institution is not appropriate, whether based on discretionary considerations, the merits, or other non-discretionary considerations, the Director will issue a summary notice denying institution.
Notwithstanding the foregoing, “In proceedings involving novel or important factual or legal issues, the Director may issue a decision on institution addressing those issues.”
“[W]here the Director determines detailed treatment of issues raised in a petition is appropriate ( e.g., complex claim construction issues, priority analysis, or real party in interest determination), the Director may refer the decision on institution to one or more members of the PTAB.”
“Any instituted IPR or PGR proceeding will be referred to a three-member panel of the PTAB to conduct the trial,” with the panel assigned according to PTAB Standard Operating Procedure (SOP) 1.
The IPR and PGR statutes already provide that an institution decision “shall be final and non-appealable.” By rendering decisions to deny institution in “summary notices”—presumably without explanation—the USPTO will be leaving patent owners, patent challengers, and the public in the dark as to whether the decision was based on the strength of the patent, a flaw in the petition, or some disqualifying character of the petitioner—or some other basis that could be arbitrary, capricious, or contrary to law. On the other hand, issuing summary notices granting institution will deprive the parties of insight into perceived strengths and weaknesses of the petition that otherwise could inform the trial phase or promote settlement of both the PTAB proceeding and any parallel litigation.
Clamoring for Clarification
Unlike the proposed rulemaking[CB5] on discretionary denials, the Director’s announcement of this new institution decision process was not accompanied by a request for public comments. That should not prevent stakeholders from insisting on clarification of at least the following points:
How will the “at least three PTAB judges” to be consulted at the institution stage be selected? Will the “summary notice” identify them?
Will a “summary notice denying institution” identify (by category) whether the denial was based on discretionary considerations, the merits, and/or other non-discretionary considerations?
Will the parties and/or the public be given notice if the Director refers an institution decision “to one or more members of the PTAB”? Could such a referral result in only a “summary notice”? Will the “summary notice” identify the “one or more members of the PTAB” to whom the institution decision was referred?
For instituted proceedings, will the parties and/or the public be given notice of any overlap between the assigned merits panel and any PTAB judges involved with the institution decision?
How Will The New Process Strengthen the U.S. Patent System?
The Director’s memorandum states that the new process is being adopted “[t]o improve efficiency, consistency, and adherence to the statutory requirements for institution,” but in the “Open Letter From America’s Innovation Agency,” also dated October 17, 2025, the Director states that the new process will serve the USPTO’s mission of “maintaining a patent system that is fair, predictable, and respected.”
The Open Letter criticizes the original panel-level institution decision-making process as one that “raised structural, perceptual, and procedural concerns inconsistent with the AIA’s design, clear language, and intent affecting, among other things, the public’s rightful expectation of impartiality.” The Open Letter specifically discusses “the following difficulties” with the original process:
Perception of Self-Incentivization: panel-level institution decision-making “invit[ed] concern that the Board may be ‘filling its own docket.’”
Bifurcated Procedures for Discretionary Considerations: The bifurcated process “was never intended to be permanent” and “appears to have inadvertently produced extraordinarily high institution rates (at one point exceeding 95 percent) for referred cases.”
Statutory Adherence and Administrative Clarity: “[Although the AIA permits delegation of institution decisions,] [r]eturning this function to the Director re-aligns … procedures with the clear language and intent of the statute and returns accountability for such decisions to the Director just as the framework of the AIA provides.”
The Open Letter states that the new process will:
Eliminate the appearance of self-interest by separating the power to institute from the body that conducts the trial
Remove a perceived referral-signal bias by centralizing the decision point
Enhance transparency and public trust through a single line of authority
Re-align the duties and responsibilities of the Director, as a Presidentially appointed and Senate-confirmed officer, to be accountable for this threshold determination and properly effectuate the clear language of the AIA and thus Congress’s intent
Attorneys at Foley have extensive experience counseling clients on PTAB trial proceedings, and have successfully represented both petitioners and patent owners. If you are interested in obtaining advice on how to navigate the new PTAB paradigms or discuss other options, please contact your Foley attorney or the author for more information.
