Before the PTAB
The Director decides institution, weighing discretionary considerations and the merits together. Since October 20, 2025 that is one determination rather than two stages, routine outcomes issue as summary notices, and a three-member panel appears afterward to conduct the trial. The Federal Circuit has held there is no legal right to institution underneath that discretion. Reported 16 September 2026 and not yet documented: the Director is said to be returning institution decisions to the Board. No superseding memorandum had issued when this page was last checked on 29 September 2026.
One of the four pages below records a proposal rather than a rule, and says so at the top. Authority level is stated on every page in this section because it varies.
Board practice has changed more in the last two years than the doctrine it applies. The changes are procedural, which is exactly why they are easy to miss and expensive to miss.
Institution, Step by Step
| Step | What the memoranda say | Clock or limit |
|---|---|---|
| Patent owner's discretionary-denial brief | "A patent owner must file a discretionary denial brief within two months of the date on which a Notice of Filing Date Accorded (NFDA) is entered into the record of the proceeding." The parties "may not stipulate to a later due date" | Two months from the NFDA; 20 pages, with more only on a showing of good cause |
| Petitioner's opposition | "A brief opposing a patent owner's discretionary denial request must be filed within three months of the date on which a Notice of Filing Date Accorded (NFDA) is entered into the record of the proceeding." Also not stipulable | Three months from the NFDA, not one month after the patent owner files; 20 pages |
| Reply and sur-reply | "A reply and a sur-reply to discretionary briefs are not authorized by default." Each side "must demonstrate good cause for authorization" | None by default |
| The institution decision | "effective October 20, 2025, the Director will determine whether to institute trial for inter partes review ("IPR") and post-grant review ("PGR") proceedings." The Director, "in consultation with at least three PTAB judges", weighs discretionary considerations, the merits and non-discretionary considerations together | One determination, not two stages |
| Form of the decision | Routine outcomes issue as summary notices, granting or denying; a reasoned decision may issue "In proceedings involving novel or important factual or legal issues" | No reasons in the routine case |
| After institution | An instituted proceeding is referred to a three-member PTAB panel to conduct the trial | Panel handles the trial, not the institution |
| Petitions already referred before October 20, 2025 | "will remain with a three-member panel." | Transitional |
A petition is still two filings with different audiences, even though one person now decides them together. The Office is explicit that they stay apart on paper: "[t]he petitioner and the patent owner should not present discretionary considerations in the petition or the Patent Owner Preliminary Response (POPR), respectively." What changed in October 2025 is that the discretionary case no longer gets decided first and alone, so the merits are weighed in the same determination rather than waiting behind it. A petitioner who prepares only prior art has still prepared for one track only, and Apple v. Squires is why that matters: there is no legal right to institution to fall back on.
The March 2026 Considerations
A further memorandum of March 11, 2026 added discretionary considerations concerning U.S. manufacturing and small-business use of AIA proceedings. It applies to every IPR and PGR in which the due date for a patent owner discretionary brief "has not yet elapsed", which means it reaches proceedings already under way.
| # | The consideration |
|---|---|
| 1 | "the extent to which any products accused of infringement in a parallel proceeding are manufactured in the United States or are related to investments in American manufacturing operations" |
| 2 | "the extent to which any products made, sold, or licensed by the patent owner that compete with the accused products are manufactured in the United States" |
| 3 | "whether the petitioner is a small business that has been sued for infringement of the patent at issue" |
Three details decide how much work each of those is. Manufacturing is not read as final assembly alone. Beyond assembling the final product domestically, the Director will consider "the extent to which components of a product are made in the United States and the extent to which products made in the United States are sent for further processing outside the United States." For method claims, "the relevant products for the purposes of this memo are the devices used to carry out the method." And small-business status is assessed against "all relevant facts that the parties raise", including the SBA size standards at 13 C.F.R. 121.801 to 121.805 and the reduced-fee standard at 37 C.F.R. 1.27(a).
The memorandum puts the evidence burden on the parties rather than the Office: it "encourages parties to identify relevant facts" in their discretionary briefing, and encourages small-business petitioners "to identify themselves". A party that does not raise these facts should not expect them to be found.
The Authorities
| Decision | Court | Decided | In one line |
|---|---|---|---|
| Apple v. Squires | Federal Circuit | 13 February 2026 | Meeting the statute's requirements does not entitle you to an inter partes review. |
What These Pages Do Not Decide
- Whether any particular petition will be instituted or denied.
- Whether a specific discretionary argument, motion to amend, or review request would succeed.
- Whether to file at all. Nothing in this section is a filing strategy.
Educational, not legal advice. Written for registered practitioners, and reporting what each authority says rather than applying it. Two of the four pages here are agency documents, one of which has not been adopted.