On 10 November 2026, the US Patent and Trademark Office (USPTO) announced that Patent Trial and Appeal Board (PTAB) merits institution decisions will return to PTAB panels on 16 November 2026. The change covers inter partes review (IPR) and post-grant review (PGR), while the Director keeps the first screen on discretionary grounds.
The change looks like a step back towards the old system. The memorandum also writes the merits test into formal guidelines for the panels, and those guidelines matter for anyone planning or facing a validity challenge.
What happened
The USPTO announcement and the memorandum were issued by Director John Squires and General Counsel and Supervisory Solicitor John Duffy. The new process applies to any IPR or PGR that has not yet received a notice referring it for review of the merits.
The Director will still decide whether to deny a petition on discretionary and other non-merits grounds. A petition that survives goes to a 3-judge panel, which decides institution on the merits on the Director’s behalf. If that panel institutes, a different panel with none of the same judges conducts the trial.
The memorandum sets out guidelines for the panels:
- A petition must explain, element by element, how the prior art discloses or renders obvious each limitation of each challenged claim. Pointing to an examiner’s findings is not enough.
- If the petitioner fails the institution standard for a substantial majority of the challenged claims, the panel will deny institution.
- Where the arguments on both sides for a claim are reasonably supported, the petitioner has not met the standard for that claim.
The Office says these guidelines follow from the statutory thresholds, the Supreme Court’s all-or-nothing rule in SAS Institute v. Iancu and earlier PTAB decisions. It also gave data: about 60% of petitions were denied on discretionary grounds in June 2025, against 15% in September 2026. The Director made more than 325 institution decisions on the merits over the past year with the help of PTAB judges.
The third change to institution in 20 months
This is the latest step in a short sequence. On 26 March 2025, then Acting Director Coke Morgan Stewart issued the Interim Processes for PTAB Workload Management. That memorandum split institution into 2 stages: the Director ruled on discretionary denial, and PTAB panels then decided the merits.
On 17 October 2025, Director Squires went further with a memorandum on Director institution of America Invents Act trial proceedings. From 20 October 2025, the Director decided institution on all grounds in consultation with at least 3 PTAB judges. Routine decisions were limited to summary notices, so most outcomes came without written reasons.
The November 2026 memorandum restores the 2-stage structure of March 2025 and describes itself as an evolution of both earlier memoranda. The difference is that panels now decide the merits under written guidelines set by the Director, rather than under their own case law alone.
The wider picture in US post-grant review
Another 3 developments give context. On 14 May 2026, the USPTO designated Magnolia Medical Technologies v. Kurin as precedential. The decision sets out the public interest factors behind discretionary denial and refused a petitioner that had already litigated the same issues in district court and lost.
Institution data show how the system has changed. The Unified Patents Q3 2026 report, published on 16 October 2026, puts the institution rate for the first year of the current administration at around 40%. It reports that ex parte reexamination accounted for 65% of post-grant filings in the quarter, with 198 requests after a record 331 in the second quarter.
Rulemaking may add further limits. The proposed PTAB rules of 17 October 2025 would bar IPR where claims have already been upheld elsewhere or where parallel litigation is likely to decide validity first. Unified Patents reports that a final version has been under White House review since July 2026. The Supreme Court’s refusal to hear a challenge to the Office’s discretion is covered in the Google v. VirtaMove post.
What it means for patent owners and challengers
For petitioners, a thin petition is unlikely to survive. Each ground needs a complete, claim-by-claim mapping to specific passages in the prior art. Because failing on a substantial majority of the claims defeats the whole petition, challenging every claim in the hope that some succeed carries more risk.
That places more weight on the search behind the petition. A thorough patent invalidity search that finds strong references for most of the asserted claims becomes the starting point, not a refinement. Companies that may not reach the PTAB at all may also wish to keep ex parte reexamination and district court defences in view.
For patent owners, the preliminary response gains value. A well-supported argument that the petition fails for most claims can end the matter, and claims where both sides are reasonably supported count in the owner’s favour. The new guidelines apply at institution, not at trial, so an instituted case still turns on the full record.
Synoptic IP’s view
The Director keeps the discretionary screen, panels must apply written guidelines, and close calls on a claim now go against the petitioner. The proposed final rule could add categorical bars on top. For these reasons, Synoptic IP’s view is that the change in what panels must apply matters more than the change in who decides, and that institution is likely to remain difficult. Ex parte reexamination is likely to stay the main route for many challengers.
The strongest counter-argument is that institution may become easier, not harder. The Office says the guidelines arise from existing statutory thresholds rather than new ones, and discretionary denials fell from 60% to 15% of petitions. Unified Patents also recorded a quarterly institution rate of 57.3% in the third quarter of 2026. IPWatchdog also reported scepticism among some patent owners about handing the merits back after only 1 year of reform.
The view still holds, in Synoptic IP’s assessment, because the third quarter rate rests on only 96 decisions and the written tie rule narrows the room for generous readings. It could change if the final rule is withdrawn or if early panel decisions apply the guidelines loosely.
Our invalidity search and claim chart teams help challengers and patent owners prepare for institution under the new process.
This article is commentary and opinion based on public reports as of 13 November 2026 and is not legal advice.
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