USPTO Returns Merits-Based IPR Institution Decisions to the PTAB: What Changes on November 16
On November 10, 2026, USPTO Director John A. Squires issued a memorandum returning part of the institution decision in inter partes review (IPR) and post-grant review (PGR) to the Patent Trial and Appeal Board judges. Starting Monday, November 16, a three-judge PTAB panel will again decide whether a petition is strong enough on the merits to go to trial. USPTO General Counsel John F. Duffy co-signed the memo.
This is not a return to the pre-2025 system. The Director still reviews every petition first and can deny it on discretionary grounds before any judge weighs the prior art. The memo also gives the panels a set of merits guidelines that resolve close cases in the patent owner's favor.
How we got here
From 2012 to 2025, the Director delegated institution decisions to PTAB panels, and the panel that instituted a trial generally decided it. The Director dismantled that model in two steps and provided a written rationale.
March 26, 2025. The Interim Processes for PTAB Workload Management memo, issued by then-Acting Director Coke Morgan Stewart, split institution in two. The Director decided discretionary denial first, and only surviving petitions went to a panel for the merits.
October 17, 2025. Director Squires took the whole institution decision for himself, effective October 20, 2025. His open letter cited accountability, a perceived "referral-signal bias," and the perception that judges had a self-interest in instituting the trials they would then hear.
May 14, 2026. In Magnolia Medical Technologies, Inc. v. Kurin, Inc., IPR2026-00097, Paper 17, a precedential decision, the Director set out the principles behind his discretionary denials. The central theme is that AIA review should be an alternative to litigation, not a second chance after losing in court.
The new memo reports how the numbers moved under that framework. In June 2025, about 60% of petitions were discretionarily denied and about 40% were referred for merits review. In September 2026, the Director discretionarily denied 15% and referred 85%. He attributes the shift to parties adapting their filings to Magnolia.
The Director also reports making more than 325 merits-based institution decisions over the past year, each with recommendations from PTAB judges. The memo credits that experience, plus two internal training programs (LOOP and PTAB STRONG), for his confidence in handing the merits back. He had previewed the move at a September 29 Senate oversight hearing.
The new two-step process
Beginning November 16, an IPR or PGR petition moves through institution as follows.
Briefing is unchanged. The patent owner may still file a discretionary denial brief, and the parties brief the merits as before, under the Interim Processes memo and the USPTO's Interim Director Discretionary Process page.
The Director reviews non-merits considerations. If he finds institution inappropriate, he denies it by written opinion or by summary notice. If not, he issues a notice or written decision and refers the petition to a panel.
A three-judge PTAB panel decides the merits on the Director's behalf. The panel's decision will "briefly address" the merits considerations it found important. It must show whether the petitioner met the standard for at least one claim and one ground, but it need not address every ground or argument.
A different panel conducts any trial. If the first panel institutes, the case is reassigned under Standard Operating Procedure 1. No judge from the institution panel will sit on the trial panel.
The new process applies to every IPR and PGR in which a notice referring the case for merits consideration has not yet been entered. By implication, petitions already referred remain with the Director.
Step 4 is the structural novelty. It preserves the goal the Director announced in October 2025, separating the power to institute from the body that tries the case, while putting the technical analysis back in the hands of the judges.
The merits guidelines: a tie goes to the patent owner
The panels do not get a blank slate. The memo directs them to apply five guidelines drawn from the Director's own decisions over the past year.
Element-by-element mapping is required. For any prior art ground, in any technology, the petition must show how the art discloses or renders obvious each limitation of each challenged claim, and identify the specific portions relied on. Pointing to an examiner's findings is not enough. The memo cites Crüzr Saddles LLC v. Tethrd LLC, IPR2025-01407, Apple Inc. v. Ginko LLC, IPR2025-01388, and LiftWerx USA Inc. v. Liftra IP ApS, IPR2026-00102.
A petition must succeed on a substantial majority of the challenged claims. If the petitioner fails to make the required showing for a substantial majority, the panel will deny institution. See CyberSecure IPS, LLC v. Network Integrity Sys., Inc., IPR2025-01441.
A well-supported preliminary response can defeat institution. If the patent owner raises a reasonable argument, backed by reliable and credible evidence, that the petitioner falls short on a substantial majority of the claims, the panel will deny.
The panel can reach the same conclusion on its own. The panel will also deny if it identifies such an argument itself.
Equipoise goes against the petitioner. If the arguments for and against unpatentability of a claim are both reasonably supported, the petitioner has not met its burden on that claim.
The "substantial majority" requirement in guideline 2 requires more than the statute. By statute, the minimum showing concerns a single claim. An IPR petition must show a "reasonable likelihood" of prevailing on at least one challenged claim (35 U.S.C. § 314(a)).
A PGR petition must show that at least one challenged claim is "more likely than not" unpatentable (§ 324(a)). A petition that fails to meet that minimum must be denied.
A petition that meets the minimum is still not eas SAS Institute v. Iancu, 584 U.S. 357 (2018) explainsncu, 584 U.S. 357 (2018). Under SAS, the Office cannot institute on some challenged claims and decline others. It must take the whole petition or none of it. One strong challenge would therefore pull every weak challenge in the same petition into trial.
The memo answers by denying such petitions as a matter of discretion, even though the statutory minimum is met. It treats that discretion as merits-based and assigns it to the panels instead of keeping it with the Director.
The equipoise rule rests on an analogy to preliminary injunctions. Citing Senator Kyl's 2011 floor statement and Federal Circuit injunction cases, the memo reasons that a movant who faces a "substantial question" has not shown a reasonable likelihood of success. Applied to institution, a patent owner need not prove its claims are patentable. It needs only a credible, supported answer to the petition.
The memo calls these guidelines illustrative, not exhaustive. It adds that other circumstances may show a failure to meet the institution burden, such as a prior adjudication upholding claims of the challenged patent or a related patent.
What stays with the Director
The Director remains the gatekeeper on every non-merits question. That includes the discretionary considerations developed since March 2025 and collected in Magnolia, such as parallel or prior litigation over the same patent, serial petitions, and the parties' settled expectations. The memo says he keeps these so that he can set "overarching policy" for the Office and apply it consistently.
Two further reservations matter. The Director may still dispose of a petition by summary notice, without an opinion, which the memo defends by comparing it to courts' rulings on rehearing and certiorari. And the delegation does not divest him of the statutory power to grant or deny institution himself in any case.
What this means in practice
For patent owners
The preliminary response is now a primary line of defense. Under guidelines 3 and 5, a reasonable argument supported by credible evidence can end the case at institution.
Aim at the count. Defeating the petition on a substantial majority of the challenged claims is enough, even if a few claims are vulnerable.
Invest in evidence early. The guidelines reward "reliable, credible evidence," which points toward expert declarations and documentary support at the preliminary stage.
Keep briefing discretionary denial. The Director's screen comes first and is unchanged.
For petitioners
Challenge only the claims you can carry. Every weak claim you add to a petition now counts against instituting the whole.
Map each limitation yourself, with pinpoint citations to the art. Do not lean on the prosecution history to fill gaps.
Anticipate the patent owner's best response in the petition itself. A reply is not guaranteed, and a tie is a loss.
For accused infringers, weigh the one-year filing deadline against the narrower path to institution when choosing between the PTAB and district court invalidity defenses.
One benefit runs to both sides. Panel decisions will include at least brief reasoning on the merits, giving parties more to work with than last year's summary notices.
What to watch
"Substantial majority" is undefined. The memo gives no number, and no test for what makes evidence "reliable" and "credible." The first panel decisions will set the working standard.
The line between merits and non-merits discretion. The Director keeps policy-based discretion, and the panels get merits-based discretion. Some issues, such as a prior adjudication of validity, could plausibly fall on either side.
The pending IPR rule. The USPTO's October 2025 proposed rule (90 Fed. Reg. 48335) would turn several discretionary grounds into regulatory bars on IPR institution. A final version has been under White House review since July 2026, and its text is not public.
Durability. This is a memorandum, not a regulation. The current Director or a successor can revise it without notice and comment.
Questions?
TCP Law, PLLC advises patent owners and accused infringers on patent strategy and enforcement. If you hold a patent facing a challenge, or are deciding whether to bring one, contact us to discuss how the new process affects your options.
This article is for general information only and is not legal advice. Reading it does not create an attorney-client relationship.
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