USPTO Returns Institution Authority to Director and Expands Director Considerations for Institution

On October 17, 2025, the Acting Director of the US Patent and Trademark Office (USPTO) published a letter and memorandum reinvigorating Director authority over the institution of inter partes review (IPR) and post-grant review (PGR) trial proceedings to align more closely with the statutory language and congressional intent of 35 U.S.C. § 314. Effective October 20, 2025, the Director of the USPTO, as opposed to the Patent Trial and Appeal Board (PTAB), will decide whether IPR and PGR trial proceedings will be instituted. Previously, the authority to institute IPRs and PGRs was delegated, as permitted by § 3(b)(3)(B), to the PTAB.

Key Takeaways

• PTAB’s Continued Role: When deciding whether to institute IPR and PGR trial proceedings, the Director will consult with at least three PTAB judges; the ultimate decision on institution, however, rests with the Director. The Director may still delegate institution authority to one or more PTAB members if the Director finds that issues raised in an IPR or PGR petition require detailed treatment; such issues include “complex claim construction issues, priority analysis, or real party in interest determination.”
• Director Considerations: The Director will review discretionary considerations, the merits of the petition, and non-discretionary considerations. This departs from the bifurcated process laid out in the March 26, 2025 memorandum entitled “Interim Processes for PTAB Workload Management.” The bifurcated interim process gave the Director the power to deny a petition for AIA trial proceedings based solely on discretionary considerations; merit and non-discretionary considerations were analyzed by PTAB judges only after the Director determined that discretionary denial of institution was not appropriate. Eliminating the bifurcated decision-making process for institution, the Director will now evaluate all three types of considerations.
• Guidance: The Letter points to the USPTO’s nearly 600 decisions under the interim period for guidance on the Director’s analysis of discretionary considerations. During that period, parties were told to look to PTAB precedent, such as Fintiv, General Plastic, and Advanced Bionics, and the Consolidated Trial Practice Guide for enumeration of discretionary considerations.
• Process: After analyzing all relevant considerations and consulting with PTAB judges, the Director will issue a summary notice either granting or denying institution. If an IPR or PGR trial proceeding is instituted, then the trial will be conducted by a three-member PTAB panel. If a pending petition was previously referred to the PTAB for consideration of the merits and non-discretionary concerns under the bifurcated interim process prior to October 20, 2025, then the PTAB will still decide institution. The processes for briefing all relevant considerations have not changed.

Strategic Considerations For Practitioners

For Patent Owners:

• Review Director Treatment of Discretionary Considerations: Patent owners should continue to closely monitor decisions from the interim process and the new process to better understand the Director’s analysis of discretionary considerations and the merits of petitions.
• Consider Discretionary and Non-Discretionary Considerations and the Merits: Patent owners should be prepared to argue against institution based on discretionary considerations as well as the merits and non-discretionary considerations. To the extent discretionary considerations fail to persuade the Director that institution is inappropriate, patent owners should present strong technical arguments in the patent owner’s preliminary response to convince the Director that the petition’s technical merits are weak and denial of institution is appropriate. Highlighting complex issues of claim construction or priority, to the extent they exist, may prompt the Director to refer the decision to PTAB members, which might increase the likelihood that institution is denied.     

For Petitioners:

• Closely Review Recent Petitions That Have Resulted in Successful Institution: Because the Director institution decisions will be a “summary notice to the parties granting institution,” Petitioners should review the underlying petitions that have been successful to help determine what types of petitions are the most likely to be instituted under the current Director.  
• Keep Arguments Simple: Avoid presenting complex arguments of claim construction or prior art status to avoid the need for the Director to issue a decision on institution addressing those issues (as opposed to the standard summary notice) and to avoid input from a PTAB member, which may change how the Director was planning to rule.