- with Inhouse Counsel
- with readers working within the Retail & Leisure and Telecomms industries
For most of 2025, the trend in Patent Trial and Appeal Board (PTAB) practice has been unmistakable: institution of Inter Partes Reviews (IPRs) and Post-Grant Reviews (PGRs) has become harder. From the Federal Circuit's reinforcement of discretionary denials, to the U.S. Patent and Trademark Office's (USPTO) restoration of real party-in-interest disclosures, to the Director's consolidation of institution authority and proposed rules limiting petitioners to "one bite at the apple," every development has tightened the gate. Against that backdrop, Director John Squires' Nov. 17 memorandum on voluntary Search Disclosure Declarations (SDDs) is striking. It represents the first clear, pro-institution move under this administration.
What the Memo Does
Effective immediately, petitioners in IPR and PGR proceedings may submit an SDD explaining where and how they found the prior art that supports their invalidity challenges. The declaration can identify the databases and repositories searched, the search terms and filters used, any analytics applied, and even the amount of time spent searching and reviewing results. While entirely voluntary, an SDD will be treated as a favorable discretionary factor supporting institution, particularly when it reveals new or underutilized search pathways or demonstrates USPTO error during examination.
For new petitions, the SDD should be filed as a stand-alone exhibit with the petition. For petitions already on file, petitioners have just seven business days from the date of the memorandum to submit an SDD. That short window makes this a near-term strategic decision for anyone with a pending petition.
This new memorandum is consistent with Squires' testimony at his confirmation hearing that patents need to be "born strong" and that there is a benefit to all stakeholders if prior art is applied at the earliest stage of examination. The request for the amount of time spent searching is particularly telling. The USPTO wants to benchmark discoverability and search efficiency. If petitioners can show that critical prior art was easy to find using common tools, it may suggest the USPTO missed something. If it required specialized analytics, that insight can inform future training and resource allocation. Either way, the USPTO gains actionable intelligence, and petitioners gain a discretionary factor in their favor.
Confidentiality and Strategic Implications
Petitioners can file an SDD ex parte with a motion to seal and request for in-camera review. If sealed, the declaration will not be publicly disclosed except as required by law. Deposition testimony related to an SDD will not be permitted absent extraordinary circumstances. This framework encourages candor without forcing petitioners to reveal proprietary search strategies to adversaries or the public. The USPTO still gets the benefit of the data for internal analytics and training.
A Countertrend in 2025 PTAB Practice
Until now, most major developments this year have made institution harder. Discretionary denials are entrenched and largely unreviewable. Real party-in-interest disclosures have been restored. Institution authority has been centralized with the Director. Proposed rules aim to limit petitioners to a single invalidity bite. Against that backdrop, the SDD memorandum is a shift in the other direction. It gives petitioners an affirmative way to strengthen their case for institution while advancing the USPTO's long-term goal of improving examination quality. For petitioners, it offers a rare opportunity to tilt the discretionary calculus in their favor. For the USPTO, it is a step toward closing search gaps and improving patent quality. Whether this becomes a widely used pathway remains to be seen.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
