Director Squires Updates PTAB Institution Decision Process 

United States Patent and Trademark Office (USPTO) Director John Squires has issued a memorandum (“memo” or “October 17 memo”) that could significantly affect institution decisions in post-grant proceedings. The memo states that the Director will now make every decision on institution, ending the previous practice of delegating such decisions to the Patent Trial and Appeal Board (PTAB). According to the memo, the new policy aims to address concerns about impartiality, public trust, and statutory adherence, ensuring that institution decisions align with the Congressional intent of the America Invents Act.  

The new institution decision process will proceed as follows:  

1. The Director, in consultation with at least three PTAB judges, will determine whether to institute trials in all inter partes review (IPR) and post-grant review (PGR) proceedings.  
2. Upon review of discretionary considerations, the merits, and non-discretionary considerations, if the Director determines that institution is appropriate, he will issue a summary notice to the parties granting institution. If the Director determines that institution is not appropriate — whether based on discretionary considerations, the merits, or other non-discretionary considerations — he will issue a summary notice denying institution.  
3. In proceedings involving novel or important factual or legal issues, the Director may issue a decision on institution addressing those issues.  
4. Where the Director determines that detailed treatment of issues raised in a petition is appropriate, he may refer the decision on institution to one or more members of the PTAB.  
5. Instituted IPR and PGR proceedings will be referred to a three-judge PTAB panel to conduct trials.  

The memo flows from the process outlined in the March 26, 2025, memo under which institution decisions were bifurcated between (1) discretionary considerations and (2) merits and other non-discretionary considerations, with the Director determining whether discretionary denial was appropriate and, if it was not, referring the merits considerations to a three-judge PTAB panel.¹ The October 17 memo supersedes the March 26 memo to the extent that (1) routine decisions on institution will be limited to summary notices, and (2) merits considerations will no longer be referred to a three-judge PTAB panel. The process for briefing discretionary considerations separately from merits and other non-discretionary considerations remains the same.  

Takeaways 

Determinations on institution will be henceforth consolidated and will account for discretionary considerations, the merits, and non-discretionary considerations. These determinations will be reached by the Director in consultation with at least three PTAB judges; they will therefore no longer be bifurcated, nor will the merits be referred by the Director for a separate decision on institution by merits panels. Generally, the result of this determination will be summary notice. However, for proceedings involving novel or important factual or legal issues, the Director may issue a decision on institution addressing those issues. And the Director may refer decisions on institution to one or more members of the PTAB if a detailed treatment of issues raised in a petition is deemed appropriate (e.g., complex claim construction issues, priority analysis, or real party in interest determination).  

The briefing process remains unchanged — i.e., patent owners may file a request for discretionary denial at month two and a preliminary response/opposition at month three. However, as noted, the Director will now resolve whether institution is appropriate.  

For more information about the updated institution decision process and how it could affect your patent strategy, please contact your Fish attorney.