IP Intelligence

Home | IP Intelligence

The U.S. Patent and Trademark Office (USPTO) continues to reshape the post-grant landscape, with the newly confirmed Director, John A. Squires, now reclaiming a direct role in deciding whether to institute Inter Partes Review (IPR) and Post-Grant Review (PGR) proceedings. This change, effective Oct. 20, 2025, is the latest in a series of significant reforms that began in late March and have steadily altered the rules of engagement for patent owners and challengers alike.

core/paragraph

The New Process: Director Institution Decisions via Summary Notices

core/heading

Under this new process, rather than delegate authority for instituting IPRs and PGRs to the Patent Trial and Appeal Board (PTAB), the Director, in consultation with at least three PTAB judges, will issue a single institution decision that considers discretionary considerations, merits, and non-discretionary considerations. The Director will issue his institution decision in a summary notice. The Director may provide a reasoned decision in proceedings that present important factual or legal issues. The Director also may refer an institution decision to the PTAB in circumstances where a detailed treatment is appropriate, for example, where complex claim construction, priority, or real party in interest issues arise.

A Year of Change: From Discretionary Denial Review to Director-Led Institution Decisions

The USPTO dramatically altered institution decision-making throughout 2025. In March, the USPTO’s then Acting Director announced new <a href="https://www.uspto.gov/sites/default/files/documents/InterimProcesses-PTABWorkloadMgmt-20250326.pdf" target="_blank" rel="noreferrer noopener">procedures</a> for discretionary denial of IPR and PGR institution. The Acting Director assumed direct responsibility for deciding whether to deny institution, weighing factors such as PTAB workload, resource constraints, parallel litigation, “settled expectations” such as the length of time that a patent has been in force, and prior validity determinations. This shift was designed to balance the PTAB’s obligations and increase its capacity for ex parte appeals.

Over the next six months, and through 618 Director Review decisions, the factors considered for discretionary denial took shape. The list now includes serial petitions, USPTO errors committed during examination, and the petitioner’s litigation conduct. As of this writing, nearly 61% of these discretionary review decisions have resulted in denial, underscoring the increasingly complex and unpredictable landscape for institution.

Most recently, the USPTO proposed <a href="https://www.govinfo.gov/content/pkg/FR-2025-10-17/pdf/2025-19580.pdf" target="_blank" rel="noreferrer noopener">rules</a> that would make IPR institution a “one-and-done” process, denying institution if challenged claims have already survived a prior art review elsewhere or if parallel proceedings are likely to resolve prior art validity first. Petitioners also must stipulate not to pursue prior art invalidity in other venues if an IPR is instituted. These changes promise greater certainty for patent owners and aim to reduce duplicative challenges.

The Director’s latest <a href="https://www.uspto.gov/sites/default/files/documents/open-letter-and-memo_20251017.pdf" target="_blank" rel="noreferrer noopener">memorandum</a> marks another major shift. By reacquiring a direct role in institution decision-making, the Director intends to combat concerns that the PTAB appears incentivized to institute reviews as a means for “filling its own docket” and to combat an implied bias favoring institution after discretionary review decisions referred merits reviews to the PTAB. The Director views this process as better aligned to statute, which places the responsibility for institution decisions on him, not his delegee.

Decisions Without Reasons: Statutory Notice and Its Implications

A key aspect of this new process is the move toward summary institution decisions—often issued without any reasoning. The statutory language of 35 U.S.C. § 314(c) only requires that “[t]he Director shall notify the petitioner and patent owner, in writing, of the Director’s determination.” There is no requirement in the IPR statute for the Director to provide the reasoning behind the decision.

This change has important practical implications. Under historic practice, the PTAB’s institution decisions often identified issues of potential concern and invited parties to address those issues in later briefing. Under a summary notice process, future institution decisions may not provide such information. Similarly, PTAB institution decisions often included views on the parties’ proposed claim constructions. When a preliminary construction went against the patent owner, it could be difficult in the later trial, to persuade the PTAB to reconsider its prior construction. With the new approach, where institution decisions may be issued without any explanation or reasoning, patent owners may no longer face an adverse preliminary claim construction at the institution stage. This could level the playing field, as the PTAB panel assigned for trial will not be encumbered by an earlier claim construction analysis.

For patent challengers, the message is clear: the path to contesting patent validity at the PTAB is narrowing. The new rules and procedures mean that once a patent has survived scrutiny in another forum, or if a petitioner cannot commit to a single venue, the door to IPR may close. Decisions to institute or deny review will often be issued in summary fashion and with no opportunity for appeal since statute bars review of such determinations.

For patent owners, these changes promise greater certainty and fewer duplicative challenges. The USPTO’s stated goal is to ensure that the patent system remains fair, predictable, and respected, with IPRs serving as a true alternative to litigation, not an additional hurdle. The shift to opaque summary institution decisions, however, may create uncertainty since the USPTO likely will not identify, at institution, issues for further development at trial.

As with previous changes, the implications for both sides are nuanced. Patent challengers must plan early and choose their forum wisely, while patent owners may find new opportunities to defend their rights. The PTAB’s workload, the evolving standards for discretionary denial, and the Director’s new role all add layers of complexity to an already intricate system.

What remains unchanged is the need for careful strategy and expert guidance. As the USPTO continues to refine its processes, stakeholders should expect further adjustments—and should be prepared to adapt.

All Roads to IPR & PGR Institution Now Run Through the USPTO Director