Director Squires Returns Merits-Based Considerations to PTAB Panels for IPR and PGR Institution Decisions

On November 10, 2026, USPTO Director John A. Squires and General Counsel John F. Duffy jointly issued a memorandum announcing that merits-based considerations at institution would be returned to PTAB panels. This is effective for all proceedings where a notice referring the case for merits consideration has not yet been entered by November 16, 2026.

Background and Rationale

In October 2025, Director Squires centralized decision-making authority at the institution stage of post-grant proceedings. The Director himself, in consultation with at least three PTAB judges, handled both discretionary and merits-based considerations for whether to institute an AIA trial.

The Director’s new memorandum reports that, with the help of PTAB judges, he made more than 325 merits-based institution decisions over the past year. The memorandum notes that parties have adapted to the Office’s guidance set forth in Magnolia Technologies, Inc. v. Kurin, Inc., IPR2026-00097, Paper 17 (Director May 14, 2026) (precedential), leading to an increase in the percentage of petitions being referred for a review of the merits. In particular, the memorandum highlights that in June 2025 about 60% of petitions were discretionarily denied, whereas in September 2026 only about 15% of petitions were discretionarily denied.

The Director stated that the new approach seeks to preserve the centralized policy oversight, while returning technical and legal merits analysis to PTAB judges.

How the Process is Changing

The Director’s memorandum delegates authority of the merits-based portion of institution decisions back to the PTAB judges, while noting that the Director retains ultimate statutory institution authority.

Under the new process, the Director will:

• Continue to first determine whether to deny institution based on any non-merits considerations, including discretionary factors.
• Issue a decision in the form of a written decision or a summary notice.

If referred for merits consideration, a three-judge panel of APJs will determine whether the petition meets the standard for institution based on the merits.

• Institution decisions must briefly explain the material merits-based considerations, but need not address every challenged claim, ground, or argument.
• Once a case is instituted, a different PTAB panel will be assigned to conduct the trial—a significant change from previous practice.

The briefing process for the parties remains unchanged, with separate discretionary and merits briefing pre-institution as outlined in the Interim Processes Memorandum and the Interim Director Discretionary Process webpage.

Director’s Guidelines on Merits-Based Considerations

The Director’s memorandum provides “illustrative and not exhaustive guidelines” that the PTAB will apply when analyzing merits-based and non-discretionary considerations. These include:

• Element-by-element analysis with particularity required: A petitioner is required to provide an element-by-element analysis, including identifying particular portions of the prior art that discloses or renders obvious each claim limitation. See also July 31, 2025 Memorandum, Enforcement and Non-waiver of 37 C.F.R. § 42.104(b)(4) and Permissible Uses of General Knowledge in Inter Partes Reviews.
• Substantial majority of claims requirement: A petitioner must make the required showing for “a substantial majority of the challenged claims” or the PTAB will deny institution. The memorandum does not explicitly define what is considered a “substantial majority” of claims, but points to examples of prior decisions, including the Board’s informative Chevron and Deeper decisions.
• Reasons to deny institution may come from the patent owner or the PTAB: If either the patent owner’s preliminary response raises or 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, the PTAB will deny institution.
• Equipoise favors patent owners: If the arguments for and against institution are both reasonably supported—“i.e., the evidence and arguments are in equipoise”—then the PTAB will find that the petition does not meet the required standard for institution.
• Prior adjudication: A prior adjudication that claims of the challenged patent or a related patent are not invalid or not unpatentable may also indicate that a petitioner fails to meet its institution burden.

The memorandum further emphasizes that, although the statute requires only a single claim to meet the institution standard (reasonable likelihood for IPRs, more likely than not for PGRs), these are minimum statutory thresholds, not automatic entitlements to institution.

Practical Implications for Practitioners

For petitioners, strong and comprehensive petitions are now more essential than ever.

• Petitions must include detailed claim mapping and supporting evidence. Petitioners should consider whether to include marginal claims lacking adequate support because weak challenges to numerous claims may jeopardize the entire petition.

For patent owners, there is now a greater opportunity to defeat institution on the merits.

• Preliminary responses should emphasize missing claim limitations, weak obviousness explanations, deficiencies affecting a substantial majority of claims, credible competing evidence creating equipoise, and any prior favorable validity determinations.

Petitioners and patent owners should consider the potential impact of this memorandum and guidance on their post-grant strategy.

Contact us with any questions regarding this update.