USPTO Returns PTAB Merits Review to Institution Decisions on November 16

The U.S. Patent and Trademark Office (USPTO) is revising how the Patent Trial and Appeal Board (PTAB) handles institution decisions for inter partes review (IPR) and post-grant review (PGR) proceedings. Under a memorandum issued November 10, 2026, by USPTO Director John A. Squires and General Counsel and Supervisory Solicitor John F. Duffy, PTAB will determine, on the Director’s behalf, whether to institute a trial based on the merits of the patentability challenges. The revised process takes effect November 16, 2026 and applies to IPR or PGR cases that do not yet have a notice entered referring the case for consideration of the merits.

The change separates merits analysis from non-merits and discretionary considerations. PTAB judges will assess the substance of patentability challenges, drawing on their technical expertise and experience, while Director Squires will continue to review discretionary and other non-merits considerations and set overarching USPTO policy for institution decisions. The USPTO said this approach is intended to allow the Director to apply discretionary considerations consistently while relying on PTAB judges for merits-based analysis. The announcement describes an administrative process revision, not a change in federal procurement funding, a solicitation, or a new contractor compliance requirement.

The USPTO cited developments over the past year as support for returning merits-based institution determinations to PTAB. Its memorandum points to judges’ assistance and advice in more than 325 decisions involving merits considerations, as well as internal programs intended to connect lessons from America Invents Act trial proceedings with patent examination. The LOOP (Learning from Outcomes to Optimize Patents) training program shared those lessons with the examining corps to support patent quality. The PTAB STRONG (Support, Training, Resources, Opportunities, Networking, and Guidance) program also held sessions on patent law at the time of the America Invents Act and the “reasonable likelihood” standard for instituting IPRs.

For government contractors and other businesses, the immediate relevance is strategic rather than transactional. Organizations that own, license, develop, or depend on patented technologies may want to review how a merits-focused institution decision could affect potential challenges to their patents or challenges they may bring against others. The change does not itself create a procurement opportunity or establish a new federal contractor obligation. Companies should also note the transition rule: the updated process applies to covered cases that have not yet received a notice referring them for merits consideration, so the status of any pending IPR or PGR may matter when assessing the procedural impact.

• Effective date: The revised PTAB institution process begins November 16, 2026.
• Proceedings covered: The change concerns inter partes review (IPR) and post-grant review (PGR) institution decisions.
• Merits responsibility: PTAB will assess the merits of patentability challenges when determining whether to institute trial, on the Director’s behalf.
• Director’s role: USPTO Director John A. Squires retains responsibility for non-merits and discretionary considerations and overarching institution policy.
• Transition scope: The revised process applies to IPR or PGR cases without a notice already entered referring the case for consideration of the merits.
• Basis cited: USPTO referenced PTAB judges’ assistance and advice in more than 325 merits-related decisions over the past year.
• Agency programs: LOOP connects AIA trial lessons with patent examination; PTAB STRONG has addressed AIA-era patent law and the IPR “reasonable likelihood” standard.
• Contractor relevance: Patent-owning or technology-dependent contractors can assess implications for their patent portfolios and potential disputes.
• Procurement impact: The announcement establishes no new procurement opportunity, funding measure, or federal contractor compliance requirement.