PTAB panels to decide merits-based institution questions Nov. 16

Beginning Monday, Nov. 16, three-member Patent Trial and Appeal Board panels will decide whether covered inter partes review (IPR) and post-grant review (PGR) petitions should proceed based on merits-based considerations. The petitions must first pass the U.S. Patent and Trademark Office director’s review of non-merits issues.

A Nov. 10 memorandum from USPTO Director John A. Squires and General Counsel and Supervisory Solicitor John F. Duffy sets out the procedure.

How covered petitions are handled i

The procedure applies to IPR and PGR proceedings that do not already have a notice referring the case for merits consideration. For those petitions:

1. The director reviews non-merits considerations, including discretionary ones.
2. If the petition is not denied at that stage, a three-member PTAB panel considers institution based on merits-based considerations and non-discretionary issues.
3. If review is instituted, a different panel conducts the trial.

The director retains statutory authority to grant or deny institution. The change concerns which officials handle parts of the process; it does not make the panel’s institution decision a final decision on the patentability issues in a later trial.

The memorandum partially reverses an Oct. 17, 2025, centralization of institution decisions in the director’s office. The difference is limited: the director keeps the initial non-merits review, while panels take up merits-based institution questions for petitions that pass it.

Claim showings and panel explanations i

For prior-art challenges, petitioners must explain how the cited material discloses or renders obvious each limitation of each challenged claim, and identify the specific portions of prior art they rely on. The memorandum directs the PTAB to deny institution if the petitioner fails to make the required showing for a substantial majority of challenged claims.

That denial direction also applies when a patent owner’s preliminary response establishes the shortfall with a reasonable argument supported by reliable, credible evidence, or when the PTAB itself reaches that supported determination. The memorandum does not define what counts as a “substantial majority.”

For an individual challenged claim, the guidance addresses evidence in equipoise: when arguments for and against unpatentability are both reasonably supported by the evidence, the petitioner is not treated as meeting the applicable institution threshold for that claim. The threshold is “reasonable likelihood” in an IPR and “more likely than not” in a PGR.

Panel institution decisions must briefly explain the merits-based considerations the panel found important and provide enough information to show whether the applicable threshold is met for at least one claim and one asserted ground. Panels do not have to address every argument or ground. Existing briefing procedures remain unchanged.

The memorandum says the director considered the merits in more than 325 IPR and PGR proceedings over the preceding year, citing the experience as part of the rationale for the change. That figure is the director’s account of the agency’s work.