FOLLOW US

In a sweeping procedural shift, U.S. Patent and Trademark Office (USPTO) Director John Squires announced Friday that he will personally make all institution decisions for America Invents Act (AIA) patent reviews — including both merits-based and discretionary determinations — effectively ending the Patent Trial and Appeal Board’s (PTAB) decade-long control over those decisions.

The change, which takes effect October 20, represents the most significant overhaul of the AIA review process since its creation in 2012. It restores the authority that Congress explicitly granted to the USPTO director under the statute but which had been delegated to the PTAB for practical reasons.

“Reclaiming the Director’s Statutory Role”

In an open letter to “colleagues, inventors, and Americans,” Squires said the decision aims to restore fairness, predictability, and public confidence in the patent system:

“The USPTO can serve the public interest only by maintaining a patent system that is fair, predictable, and respected,” Squires wrote. “Returning institution authority to the director bolsters our mission because it restores the statutory framework mandated by Congress in the America Invents Act.”

Under the new process, Squires will consult with at least three PTAB judges before deciding whether to institute inter partes reviews (IPRs) or post-grant reviews (PGRs). He said his decisions will typically be brief “summary notices” declaring whether review is appropriate.

When a petition raises “novel or important factual or legal issues,” Squires may issue a more detailed opinion. In complex cases — such as those involving claim construction, priority analysis, or real-party-in-interest determinations — he may refer specific issues to PTAB judges for detailed analysis before issuing a final institution decision.

End of the Bifurcated Process

The move ends the bifurcated process implemented earlier this year by then–acting director Coke Morgan Stewart, who separately evaluated petitions for discretionary denial before referring qualifying petitions to the PTAB for review on the merits.

Squires said he will now decide both aspects — discretionary and substantive — himself, while acknowledging that Stewart’s 580 prior decisions on discretionary denials will serve as “substantial guidance” for his approach.

Stewart’s tenure had been marked by a number of discretionary denials, often when a parallel district court trial was scheduled before the PTAB’s review deadline or when a patent had been in force long enough to create “settled expectations” against further challenges.

Cases already referred to the PTAB before October 20 will continue under the current three-judge panel system.

Addressing Perceived Bias and Structural Issues

Squires cited three main reasons for reclaiming institution authority:

1. Perception of self-incentivization — He said there is a widespread belief, “perhaps unfounded,” that the PTAB benefits from instituting reviews because it affects “docket size, credit, and resource allocation.” Such perceptions, he noted, risk “undermining public confidence in the integrity of the USPTO’s adjudicatory functions.”

2. Skyrocketing institution rates — The bifurcated system led to what he described as “extraordinarily high” institution rates, with more than 95% of cases referred by Stewart being instituted.

3. Statutory compliance — The AIA expressly vests the director—not the PTAB—with the authority to make institution decisions. Restoring that responsibility to his office, Squires said, aligns the USPTO with “the clear language and intent of the statute.”

Emphasis on Transparency and Accountability

Squires emphasized that consolidating institution decisions under a Senate-confirmed presidential appointee will improve transparency, eliminate the perception of self-interest, and make the process more accountable to the public.

“The existing system was initially practical,” he wrote, “but it has raised structural, perceptual, and procedural concerns inconsistent with the AIA’s design and intent, affecting the public’s rightful expectation of impartiality.”

Squires also reiterated concerns he voiced during his Senate confirmation hearing in May, where he questioned whether PTAB data appeared “skewed” due to high patent invalidation rates and the disproportionate number of inter partes reviews compared to post-grant reviews.

Looking Ahead

Following this reform, all AIA institution decisions will carry the director’s direct signature, marking a return to a centralized, accountable review process at the top of the USPTO. Squires said this model will “enhance trust and predictability” while reaffirming that the agency’s patent adjudication system operates “squarely within the statutory boundaries established by Congress.”