On October 29, 2025, members of the Patent Trial and Appeal Board (PTAB) presented a “USPTO Hour” session as a follow-up to a recent memorandum entitled “Director Institution of AIA Trial Proceedings” issued by USPTO Director Squires on October 17, 2025.
This memorandum states that, as a general matter, Director Squires himself, in consultation with at least three PTAB judges, will handle the entirety of the process for determining whether to institute AIA trials, taking into account all relevant considerations including discretionary denial considerations, non-discretionary considerations, and the merits (e.g., reasonable likelihood of success). In addition, effective October 20, 2025, the Director will issue “a summary notice” either denying or granting institution, unless he determines that “detailed treatment of issues is appropriate” and refers the decision on institution to “one or more members of PTAB.”
The USPTO Hour fleshed out more details about the new process, including that:
- The memorandum “supersedes but does not cancel” the March 26, 2025 memorandum entitled “Interim Processes for PTAB Workload Management,” which presents a prior interim bifurcated process for determining whether to institute an AIA trial, as well as a number of new discretionary denial considerations, including “settled expectations”;
- The briefing process for the parties during the institution stage will remain the same as laid out in the March 26 memorandum and on the “FAQs for Interim Processes for PTAB Workload Management” webpage;
- The Director will consult with at least three PTAB judges when determining whether to institute an inter partes review (IPR) or post-grant review (PGR);
- Decisions on institution will fall into three types: (1) “summary notices”; (2) decisions by the Director addressing novel or important factual or legal issues; and (3) upon referral by the Director, decisions by one or more PTAB members to address complex factual issues and/or provide a more fulsome analysis;
- As it relates to type (2), “novel and important factual or legal issues” may involve exploring the quality of prior art searching by the Office versus the petitioner, e.g., what searching tools and database were used, to provide information about how the Office may have erred during prosecution;
- The “vast majority” of decisions on institution will be in the form of summary notices;
- Summary notices will provide a “thumbs up or thumbs down” decision on whether an AIA trial is instituted or not—the notices will not provide analysis or reasoning, nor indicate whether a denial or grant of institution is based on discretionary denial considerations, non-discretionary considerations, or merits;
- Summary notices will come out in batches, likely every week (similar to what we have seen with decisions on discretionary denial considerations under the prior bifurcated process);
- We can expect the first set of batches to be “a lot more” denials of institution because “the phase the cases are in,” but once the new process progresses into “steady state,” likely by the end of November, we can expect to see both decisions denying and granting institution;
- If the Director decides to institute an IPR or PGR, the PTAB will assign the case to a panel of three judges per Standard Operation Procedure 1 (Rev. 16) (SOP 1), and the panel will issue a scheduling order for the trial in “due course” and handle the case going forward;
- PTAB judges assisting the Director at the institution stage will not participate on the panel handling a trial after institution;
- In response to a question about how long the Director himself will spend on decisions on institution, the PTAB indicated the Director will take as much time as needed to make “a thoroughly vetted” decision;
- Prior to a decision on institution, parties should direct any questions or requests relevant to a case to a new email address: Director_DI@uspto.gov; by contrast, after institution, parties should direct questions and requests to Trials@uspto.gov; and
- Parties can still request rehearing or Director Review of a decision on institution thorough existing processes, regardless of the decision’s form.
The USPTO may reveal more information as we start to see the Director issue decisions on institution for the first time soon under this new process. Sterne Kessler is keeping close track of all fast-paced changes relating to PTAB practice and is well prepared to help clients navigate any issues and questions relating to USPTO practice generally.
