USPTO gives PTAB judges back the patent-validity gate—but ties now favor patent owners

The story

The U.S. Patent and Trademark Office is returning a crucial part of patent-validity review to the Patent Trial and Appeal Board. Starting November 16, three administrative patent judges will decide whether the merits of an inter partes review or post-grant review petition justify opening a trial—after the petition first survives a separate discretionary screen by USPTO Director John Squires.

The distinction is central. This is not a complete return to the system that existed before Squires centralized institution authority in October 2025. The Director will continue to decide non-merits questions and discretionary denials, including policy considerations that can end a petition before judges examine its prior-art case. Petitions that pass that first gate will then go to a three-judge panel for the merits decision. If review is instituted, a different panel, with no overlapping judges, will conduct the trial.

Inter partes review, or IPR, lets a third party ask the PTAB to cancel patent claims on novelty or obviousness grounds using patents and printed publications. Post-grant review, or PGR, is available during a narrower window after grant and can address a wider set of patentability defects. These proceedings are faster alternatives to litigating validity exclusively in federal court, which makes the institution decision commercially important for patent owners, accused infringers and investors.

The November 10 memorandum from Squires and USPTO General Counsel John Duffy does more than change who signs that decision. It gives panels five non-exhaustive guidelines for weighing the merits. A petition must map the prior art to every limitation of every challenged claim with an understandable element-by-element explanation; pointing to an examiner’s earlier findings is not enough. The Board should deny institution when the required showing fails for a substantial majority of challenged claims.

Patent owners receive two routes into that same test. A preliminary response can defeat institution by making a reasonable argument, supported by reliable and credible evidence, that the petition falls short for a substantial majority of claims. The panel can also reach that conclusion on its own. Most consequentially, when the arguments and evidence for and against unpatentability are reasonably supported and evenly balanced, the guidance says the petitioner has not met either IPR’s ‘reasonable likelihood’ standard or PGR’s ‘more likely than not’ standard for that claim.

That tie rule interacts with the Supreme Court’s 2018 decision in SAS Institute v. Iancu, which made IPR institution an all-or-nothing choice across challenged claims. A petitioner can no longer assume that one strong claim challenge will carry a long list of weaker ones into trial. If thin challenges make up a substantial majority, the entire petition may be denied. The likely response is narrower petitions, more complete prior-art mapping and greater use of expert evidence before institution rather than after it.

The office says the delegation follows a year in which PTAB judges advised on more than 325 merits decisions. Squires said that experience dispelled his earlier concern that Board workload and performance structures might create a perception of judges filling their own docket. The USPTO also cited internal programs intended to connect AIA trial outcomes with examiner training and to reinforce the statutory institution standards.

Independent reporting puts the shift in a broader policy context. Reuters reported that the PTAB instituted 37% of IPR petitions in 2026, down from more than 65% under the previous director. The decline also reflects policies outside the merits handoff, including discretionary limits on challenges to older patents. Apple, Intel, Tesla, Google and other technology companies have contested some of those restrictions, so returning merits analysis to judges does not necessarily mean that more petitions will reach trial.

The transition rule is procedural but immediate. The updated process applies to IPRs and PGRs that do not yet have a notice referring the case for merits consideration. Parties with pending petitions therefore need to check the docket rather than assume the November 16 effective date alone identifies the decision-maker. Panel institution decisions must briefly address the merits considerations the judges found important, offering more explanation than the summary notices used for many centralized decisions.

INNOVOX analysis: the USPTO has separated technical judgment from policy control without giving up either. Specialist judges regain responsibility for comparing claims with prior art, while the Director preserves a centralized screen for broader institutional priorities. The new structure could improve the quality and transparency of merits decisions, but it also embeds a patent-owner-friendly burden that will be tested case by case.

What to watch is not simply the number of institutions. Early decisions will reveal how panels define a ‘substantial majority,’ what evidence is credible at the preliminary stage and how much reasoning a brief merits decision provides. A rising institution rate would suggest that technical delegation changes outcomes; a stable rate would show that the Director’s discretionary gate and the new evidentiary rules remain the dominant constraints.

INNOVOX analysis

The institutional handoff matters less than the burden embedded in it. PTAB judges regain technical judgment, but they receive a framework that makes claim selection and evidence quality decisive at the outset. That should discourage petitions padded with thin challenges, while giving patent owners a clearer route to stop an all-or-nothing review before trial.

What to watch

Watch the first panel decisions after November 16 for definitions of ‘substantial majority,’ the quality of written merits explanations and the treatment of evenly balanced expert evidence. Also track whether the IPR institution rate rises from 2026’s 37% level and whether courts are asked to review the Director’s retained discretionary gate.