The USPTO Director takes over inter partes review institution and proposes barring review where a court trial will come first

2025-10-17PTAB

Memorandum, "Director Institution of AIA Trial Proceedings" (Oct. 17, 2025), from John A. Squires, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, to all Patent Trial and Appeal Board judges; Revision to Rules of Practice before the Patent Trial and Appeal Board, 90 Fed. Reg. 48335 (Oct. 17, 2025) (proposed rule)

Director John Squires announced that from October 20, 2025 the Director will determine whether to institute inter partes review and post-grant review, in consultation with at least three judges of the Patent Trial and Appeal Board. Where institution is appropriate on at least one ground for one challenged claim, the Director issues a summary notice granting institution; otherwise a summary notice denying it. Routine institution decisions are limited to summary notices, the Director may write a decision on novel or important factual or legal issues, and may refer a petition to Board members for detailed treatment such as complex claim construction, priority or real party in interest questions. Instituted trials go to three-judge panels, which no longer decide institution on the merits; briefing under the March 26, 2025 interim procedures continues. The same day the United States Patent and Trademark Office published proposed rules that would bar institution unless each petitioner stipulates that it and its privies will not pursue invalidity under Section 102 or 103 of Title 35 of the United States Code in any other forum; bar it where a challenged claim was previously upheld by a district court, the International Trade Commission or a Board final written decision; and bar it where a district court trial or Commission determination on those grounds will more likely than not come before the final written decision.

What it changesFor a company defending against software or artificial intelligence patents, the Board is now a forum the Director opens case by case, usually without explanation, and the invalidity case should be budgeted and built for district court from the start, with the petition as an option rather than the plan. If the proposed rules are adopted as written, an instituted petition would cost the petitioner its anticipation and obviousness defenses everywhere else, so the choice of forum for the best prior art would have to be made once, early, and with the trial team in the room. Defendants sued in fast districts would rarely qualify at all. Patent owners holding older software and machine learning patents gain bargaining power in licensing and should assert where trial dates come quickly. The memorandum is in effect; the rules are proposed and may change before adoption.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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