Skip to main content
Contact Locations Diversity Pro Bono Why Wolf

USPTO Director Returns Merits Review of IPR and PGR Petitions to the PTAB

8 min read

On November 10, 2026, USPTO Director John Squires issued a memo to the judges of the Patent Trial and Appeal Board (PTAB) informing them that, starting November 16, 2026, merits-based decisions on whether to institute a petition for inter partes review (IPR) or post-grant review (PGR) will once again be decided by panels of PTAB judges, ending a year-long period in which such decisions have been made by only the Director himself. 

The New Review Process

For the past year, the PTAB has operated under a bifurcated process where a petition is first evaluated for discretionary factors, and if it is not discretionarily denied, it is then evaluated for its merits, with both stages being decided by the Director. The Director’s new memo returns merits-based decisions to the PTAB judges and changes some of those procedures.

What stays the same:

  • Bifurcated briefing process before institution. The bifurcated briefing process will continue, as outlined in the USPTO’s March 2025 Interim Processes Memorandum and on the current Interim Director Discretionary Process webpage.
  • Director decides discretionary denial first, before merits review. The Director will still decide initially whether to deny a petition based on discretionary factors. That decision will be issued as a written opinion or simply a summary notice. To date, most of Director Squires’ discretionary decisions have been by summary notice.

What changes:

  • Three-judge panel reviews the merits. A petition that passes the Director’s initial discretionary review will now go to a three-judge panel of PTAB judges for review of the merits, rather than staying with the Director.
  • An institution decision addressing the merits. The institution decision by the initial PTAB panel will briefly address the merits considerations “that the panel found important.” Additional detail may be provided depending on the facts and circumstances presented. This is a material change from the practices of the past year, during which most of Director Squires’ merits decisions have been by summary notice.

After institution:

  • If review is instituted, a different panel of PTAB judges, with none of the same judges as the institution panel, will conduct the IPR or PGR trial.

Which petitions are covered:

  • The new process applies to all future petitions for IPRs and PGRs, and also to currently pending petitions in which no notice referring the case for merits review had been entered before November 10.

The Director’s Guidelines for the Merits Panel

The Director’s memo also lists five guidelines the PTAB judges will apply in evaluating the merits at the institution phase, which the memo notes are “illustrative and not exhaustive.” Under these guidelines, the initial merits panel will:

  1. Evaluate whether the petition has shown how the prior art discloses or renders obvious each limitation of each challenged claim, as opposed to “[m]erely pointing to a USPTO examiner’s findings,” for example.
  2. Deny institution if the showing is not made for a “substantial majority” of the challenged claims.
  3. Deny institution if a Patent Owner’s preliminary response raises “a reasonable argument, well-supported with reliable, credible evidence, that the petitioner fails to meet the institution standard for a substantial majority of the challenged claims.”
  4. Deny institution if the PTAB itself determines that “a reasonable argument, well-supported with reliable, credible evidence, shows that the petitioner fails to meet the institution standard for a substantial majority of the challenged claims.”
  5. Treat a petitioner’s challenge to a claim for which “the evidence and arguments are in equipoise” as not having “met the reasonable likelihood IPR standard, or the more likely than not PGR standard.”

The memo identifies other scenarios that may not receive institution, such as when there has been “a prior adjudication that claims of the challenged patent or a related patent are not invalid or not unpatentable.”

What to Consider Going Forward?

  • Petitions for IPR and PGR will still go first to the Director for discretionary review.
  • If a petition passes that review, an initial panel of PTAB judges will review the petition’s merits and issue a decision that briefly addresses the merits considerations the panel found important. Petitioners and patent owners may expect to receive more information in institution decisions than has typically been provided over the past year.
  • If that panel institutes review, a different panel of PTAB judges will conduct the trial. Because the institution is only preliminary, trial panels may ultimately find different issues important than the initial panel did at institution.

If you have questions about how this change affects your patents or a planned challenge, please contact us.
Top