The USPTO Director De-Delegates - But What About the Rules?

"We blogged on these decisions here, here, here, here, and here. On October 17, 2025, newly appointed Director Squires issued an open letter and memorandum to the public and to the Patent Trial and Appeal Board (Board), taking back authority previously delegated to the Board to decide whether to institute an IPR or PGR proceeding on the merits. Now, the Director will issue summary notices on whether to institute proceedings."

"While the Director cited 35 U.S.C. § 3(b)(3)(B) as giving the Director authority to delegate responsibilities under the America Invents Act (AIA), there are numerous rules, enacted after public notice and comment, which delegate institution responsibilities to the Board, and involve the Director only after action by the Board. (Curiously, on the same day, the Director issued a Notice of Proposed Rulemaking, to limit discretion of the Board to institute inter partes review, seeking public comment.)"

"The Director's open letter and memorandum unilaterally countermand numerous Rules of Trial Practice which vest authority for institution of post-grant proceedings with the Board. These rules, enacted after a notice of proposed rulemaking and opportunity for public comment, represent the Director's delegation of authority. Repealing or taking back that authority also should involve a notice of proposed rulemaking and opportunity for public comment."

On October 17, 2025, Director Squires issued an open letter and memorandum taking back authority delegated to the Patent Trial and Appeal Board to decide whether to institute IPR or PGR proceedings on the merits. The Director announced that the Director's office will issue summary notices on whether to institute proceedings. The action shifts institution authority from the Board to the Director and appears to involve rulemaking without public notice and comment. Numerous Rules of Trial Practice had previously delegated institution responsibilities to the Board following notice-and-comment rulemaking. The Director cited 35 U.S.C. § 3(b)(3)(B) and concurrently issued a proposed rule to limit Board discretion. The change could significantly curtail IPR and PGR practice and affect potential petitioners' strategies.

Read at Global IP & Technology Law Blog