USPTO to study products under additional factors to decide on IPRs and PGRs

USPTO to study products under additional factors to decide on IPRs and PGRs

Encourages small business petitioners to better understand how to defend against such claims

The U.S. Patent and Trademark Office (USPTO) has issued a memo stating that the agency’s director will study additional discretionary factors for institution of inter partes review (IPR) and post-grant review (PGR).

This was to focus on products that were manufactured and sold in the United States, and address the trend over the last few decades of “substantial segments of the US’ existing manufacturing base, particularly in the electronics and computer industries” having moved overseas.

The memo read: “The America Invents Act (AIA) calls on the director to consider the effects of standards for institution on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings".

The Office will now consider additional factors when deciding on IPRs and PGRs:

1. The extent to which any products accused of infringement in a parallel proceeding are manufactured in the US 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 US.

3. Whether the petitioner is a small business that has been sued for infringement of the patent at issue.

The USPTO memo explained that, while many stakeholders maintained that the availability of IPRs and PGRs was crucial to protecting U.S. manufacturers and small businesses, “the off-shoring trends have continued, notwithstanding the broad availability of IPR and PGR proceedings for 15 years.”

Additionally, the maximum users of AIA proceedings were large companies without a significant manufacturing presence in the US.

Based on the November 2024 Promoting and Respecting Economically Vital American Innovation Leadership Act, Senator Chris Coons (D-DE) reasoned that all the top users of the Patent Trial and Appeal Board (PTAB) were big tech companies:

He stated, “Samsung, Apple, Google, Intel and Microsoft accounted for 80 percent of all PTAB petitions a few years ago. and 85 percent of defendants in litigation have used it as a duplicative rather than an alternative path.”

Furthermore, the USPTO memo cited its findings, mentioning the October 2025 “Study of High-Volume Filers and Domestic University-Related Patentees in District Court Litigation at the PTAB,” to support this point. It added, “These facts and data raise a legitimate question about whether the current institution framework appropriately weighs the interests of entities that invest in domestic production.”

The Patent Office also motivated small business petitioners, who had sued for infringement, to identify themselves to better understand how they could defend against such claims by using IPRs and PGRs.