USPTO Adds U.S. Manufacturing and Investment as Discretionary Factors in IPR and PGR Institution Decisions
On March 11, 2026, USPTO Director John A. Squires issued a Memorandum (available here) identifying additional discretionary institution factors for inter partes review (IPR) and post-grant review (PGR) proceedings. The Memorandum signals that the USPTO will place greater weight on domestic economic and industrial policy concerns when deciding whether to institute review.
The Memorandum adds three key considerations to the discretionary institution analysis:
1. Whether the accused products in a parallel proceeding are manufactured in the U.S. or tied to investment in U.S. manufacturing operations;
2. Whether the patent owner’s competing products are manufactured in the U.S.; and
3. Whether the petitioner is a small business that has been sued for infringement of the challenged patent.
The Memorandum also states that U.S. manufacturing will be interpreted broadly, including not only final assembly, but also domestic component production and partial processing.
These additional discretionary factors may materially affect both petitioners and patent owners. Patent owners with meaningful U.S. manufacturing or investment may gain an additional basis to argue against institution, while petitioners may need to address domestic manufacturing ties and small-business status more directly in discretionary institution briefing.
In particular, the new memorandum may make institution more difficult for petitioners that lack meaningful U.S. manufacturing or investment connections, including many foreign companies seeking to challenge patent validity through IPR or PGR.
This development may favor patent owners, and it may reasonably be expected to contribute to greater activity in ITC proceedings and patent litigation as patent validity challenges become harder to institute.
The Memorandum applies to all IPRs and PGRs in which the due date for a patent owner discretionary brief has not yet elapsed.
