USPTO Signals a PTAB Shift to Bring About Predictability
USPTO Director John Squires, is signaling another potentially important shift in how the Patent Trial and Appeal Board (PTAB) approaches discretionary decisions. In recent remarks, he previewed an upcoming “comprehensive” or “holistic” decision that will lay out the current policy framework governing PTAB discretion, with an emphasis on increasing predictability.
Since October 2025, Squires has taken on a role in deciding whether to institute inter partes reviews and post grant reviews, including both the discretionary determination and the underlying merits, marking a departure from the PTAB’s longstanding practice of delegating those decisions to panels.
For practitioners and stakeholders, predictability has long been a sticking point. Discretionary denials, particularly in parallel litigation contexts, have sometimes felt inconsistent or difficult to anticipate. Squires’ comments suggest that the USPTO is preparing to address those concerns head on by consolidating guidance into a single, authoritative decision.
The use of terms like “holistic” and “comprehensive” may be important. It could signal a broader effort to harmonize existing doctrines and provide clearer guardrails for when and how discretion will be exercised. This may increase the potential to reduce forum shopping concerns, assisting petitioners and patent owners in better assessing their strategies early in a dispute.
Of course, the impact will depend on the substance of the forthcoming announcement. Will the PTAB lean toward more institution or more denials? Will it clarify the role of parallel district court proceedings? We will have to wait to find out.
While this points to an effort to bring greater coherence to PTAB discretion, its real significance will most likely depend on how clearly it defines the boundaries of that discretion and how consistently those principles are applied going forward. For now, it stands as a signal that further refinement of the framework is underway, with practical implications that will only become apparent once any forthcoming policy is put into action.
The attorneys at Renner Otto will continue to monitor this and other developments as they occur at the USPTO. We strive to be authorities in all matters concerning the ever-evolving landscape of Intellectual Property; however, the information provided on our website is not intended to be legal advice, nor does it create an attorney-client relationship.
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