Articles

What One Administration Gives a Patent, the Next Can Take Back

A company spent two years and a substantial sum getting a patent through the Office. The patent is now six years old, and a competitor has filed a petition to cancel it. Under the rules in place two years ago, that petition had a reasonable chance of being heard. Under the rules in place today, the Director may turn it away without ever reaching the merits, because the patent has been in force long enough that the public's expectations have settled around it. Nothing in the statute changed between those two dates. The administration did.

That is the fact worth planning around. Most of what determines whether a U.S. patent is strong, and whether it can be enforced at a reasonable cost, does not come from Congress. It comes from the Patent Office, which changes course when the administration changes. This piece is primarily intended for general counsel and for the outside counsel who advise companies on what their patents are worth and what it will cost to defend them.

The pattern is now long enough to see clearly. Since 2014, three administrations have pointed the same office in three different directions, and none of them needed a new statute to do it.

The statute sets the floor, and the Director sets the practice 

Start with what an administration cannot do. It cannot repeal the Patent Act, and it cannot overrule the Supreme Court. Alice and Mayo still govern what kinds of inventions are eligible for a patent, and Amgen still requires a patent to teach the full scope of what it claims.^[1] Those decisions constrain every Director equally. So does the America Invents Act, which in 2011 created inter partes review, the proceeding in which the Patent Trial and Appeal Board can cancel an issued patent on prior art.^[2]

What the statute leaves open is where the leverage sits. The Act says the Director "may not" institute a review unless the petition shows a reasonable likelihood of success, and the Supreme Court has read that language as a grant of discretion rather than a command.^[3] The same Court held in 2016 that the decision not to institute is largely unreviewable, and in 2020 that the unreviewability extends to the time-bar rulings wrapped into it.^[4] In 2018 the Court rejected the argument that cancellation by an administrative board is unconstitutional, and in 2021 it held that the administrative judges' decisions must be subject to review by a presidentially appointed Director.^[5] Read together, those cases put a remarkable amount of power in one office, and they put it there on purpose. A Director who wants to hear more challenges can, and a Director who wants to hear fewer can do that too, and neither decision is easy to appeal.

Three administrations, three directions 

The Obama-era Office built the machinery and then watched the courts narrow it. After Alice in 2014, eligibility rejections surged, and the Office's job was mostly to translate a skeptical Supreme Court into examination instructions.

Director Andrei Iancu, confirmed in 2018, took the office the other way. His January 2019 guidance told examiners to treat a claim as abstract only if it recited subject matter the courts had already placed in a familiar category, and to find it eligible if it integrated that subject matter into a practical application.^[6] The same year, the Board's Fintiv decision gave panels a basis to decline review where a district court trial was imminent.^[7] Both moves favored patent owners, and both were guidance and precedent rather than amendments to the statute.

Director Kathi Vidal reversed course in June 2022. Her interim procedure told panels not to deny review on Fintiv grounds where the petitioner agreed not to raise the same art in court, and to give less weight to a scheduled trial date.^[8] Institution rates settled in the high 60s by petition and the low 70s by patent.^[9] In 2024 the Office also proposed to write its institution practices into binding rules, and it published guidance extending the eligibility framework to inventions made with artificial intelligence.^[10]

The current administration has reversed it again, faster and further. On February 28, 2025, Acting Director Coke Morgan Stewart rescinded the June 2022 procedure. On March 26 she took the discretionary decision away from the panels entirely: the Director, consulting at least three judges, now decides whether to deny a petition on discretionary grounds before any panel reaches the merits, with a separate round of briefing to argue it.^[11] Denials followed on a ground the Office had not used before, that the public's expectations had settled around a patent old enough to have been relied on.^[12]

On September 18, 2025, the Senate confirmed John A. Squires as Director by a vote of 51 to 47.^[13] On October 17 he went further than the interim process. Effective October 20, the Director personally decides whether to institute every inter partes review and every post-grant review, on the discretionary grounds and on the merits, again in consultation with at least three judges.^[14] The same day, the Office proposed rules that would confine review to claims that have not already been challenged in litigation, or whose earlier challenge ended at an early stage, and it withdrew the 2024 proposal so it could start over.^[15] On November 28, 2025, it rescinded the February 2024 inventorship guidance in full, holding that there is no separate standard for inventions made with AI assistance and that AI cannot be named as an inventor.^[16]

The results are in the Office's own statistics. The institution rate by petition was 66 percent in fiscal 2022, 67 percent in 2023 and 68 percent in 2024. It fell to 50 percent in fiscal 2025, and it stood at 37 percent for the first two months of fiscal 2026.^[17] By patent, the rate fell from 74 percent in fiscal 2024 to 54 percent in fiscal 2025 and 46 percent so far in fiscal 2026. The drop is sharpest in the technologies where most petitions are filed. Electrical and computer petitions were instituted 27 percent of the time in those two months, against 67 percent for bio/pharma and 59 percent for chemical.^[18]

One more point belongs in the chronology, because it shows how slowly the formal machinery moves. The fee schedule that took effect on January 19, 2025, setting or adjusting 433 fees and adding 52 new ones, was the product of a biennial review and a final rule published on November 20, 2024, before the administration changed.^[19] Fees follow a process. Institution policy follows a memorandum.

What an administration can actually move 

It helps to sort the patent system into the parts an administration controls and the parts it does not.

It controls institution. The drop from 68 percent to 37 percent happened without a vote in Congress, and it happened because the statute was written to allow it. A patent owner whose petition gets denied on discretionary grounds has no appeal from that denial, which is precisely what Cuozzo and Thryv held.^[4]

It controls examination. Eligibility guidance changes what examiners reject and what they allow, and the 2019 guidance and its 2022 successor produced noticeably different allowances in software and diagnostics. Inventorship guidance decides how the Office treats inventions made with AI tools. Both are revisable by the next Director, and the November 2025 rescission shows how quickly that revision can come.

It controls money, within limits. Section 10 of the America Invents Act lets the Office set fees to recover its aggregate costs, subject to public comment and congressional review, which is why the January 2025 schedule survived the change in administration.^[19] A Director can still use fees to shape behavior, and the new fees for large information disclosure statements and for continuing applications do exactly that. What a Director cannot do is cut fees below cost or spend money Congress has not appropriated.

It does not control the courts. Alice, Mayo and Amgen bind the Office no matter who runs it, and a Director's guidance on eligibility is examination policy, not a holding. It does not control estoppel, the presumption of validity or the burden of proof in district court, all of which are statutory. And it does not control the calendar entirely. A rulemaking takes a year or more and can be withdrawn, as the 2024 proposal was. A memorandum takes an afternoon and can be rescinded the same way.

Congress is the slow variable 

Both of the bills that would actually change the statute are bipartisan, and neither has moved far. The Patent Eligibility Restoration Act, S. 1546, was introduced on May 1, 2025, and the Senate Judiciary Committee held a full hearing on it on July 14, 2026.^[20] It would replace the judicial exceptions with a statutory definition of what is eligible. The PREVAIL Act, S. 1553, was introduced the same day and would add a standing requirement for petitioners and move estoppel earlier in the proceeding.^[21] Either would do more to change the strength of patents than any memorandum. Neither has passed either chamber, and both have been introduced in earlier Congresses without result.

That is worth stating plainly to a board. The durable changes in patent strength since 2014 have come from the Office and the courts, not from legislation. Betting a product roadmap on a bill is not a plan.

What the next administration might do 

The useful hypotheticals run in both directions.

One direction continues what is underway. If the proposed institution rules are adopted, a patent that has already survived litigation, or settled it, would be largely insulated from a second administrative challenge. Combined with the Director's personal control over institution and the "settled expectations" denials, that would make an issued patent meaningfully harder to attack outside of district court. Patents would be worth more on that measure, and they would be worth more to the people who already hold them. The cost would land on defendants and on operating companies that use review to clear out patents they believe should never have issued. A patent that is hard to challenge is not the same thing as a patent that should have been granted.

The other direction unwinds it. Everything described above, other than the fee rule and the proposed regulation, is a memorandum or an interim process. A Director appointed by the next administration could rescind all of it on the first day, restore panel institution and revive something like the June 2022 procedure. There is precedent for exactly that. It happened in 2022, and it happened again in 2025. If it happens a third time, the institution rate can move back toward the high 60s as quickly as it fell, and the patents that look strong today will look contestable again. Nothing about that outcome requires a statute either.

The less obvious risk sits between the two. Because institution decisions are unreviewable, the practice can oscillate indefinitely without a court ever settling it. Companies will spend the next decade planning around a variable that resets every four to eight years. That is manageable. Pretending it is stable is not.

What this means for the strength of a patent 

A patent's strength has never been a single number, and the administrative swings make the components move in opposite directions.

Enforceability in court is mostly untouched. The presumption of validity, the clear-and-convincing burden, Alice and Amgen do not change with the administration. A patent that is invalid on its face is still invalid, and a defendant with a strong case can still win it in district court. What changes is the price and the path. When institution rates are high, a defendant has a cheaper and faster route, and a patent owner faces a real chance of losing the patent before trial. When institution rates fall to where they are now, that route narrows, the patent owner keeps the patent through the litigation, and the defendant pays district court rates to raise the same arguments.

Durability is where the exposure concentrates. A patent issued under one administration's examination guidance may be enforced under another's, and challenged under a third's. The 2019 eligibility guidance let through claims that a 2014 examiner would have rejected. Those patents are now being litigated in front of judges who apply Alice directly and owe the guidance nothing. Conversely, a patent denied review in 2026 on discretionary grounds can face a fresh petition in 2029 if the policy turns over, because a discretionary denial does not estop anyone. Estoppel attaches only after a final written decision.^[22]

So the honest statement is a narrow one. Today's policies make patents harder to challenge administratively, which makes them stronger against that particular threat and for as long as the policies last. They do not make patents more valid, they do not bind the courts and they do not survive the next Director unless the next Director agrees with them.

What to do about it 

For companies that hold patents, the question is whether the portfolio can stand on its own. Claims that were allowed because an examiner was applying favorable guidance deserve a fresh look against the cases, not against the memorandum that was current at the time. Where a patent matters commercially, the file history and the specification should be strong enough to survive a validity challenge in district court, because that is the forum a patent owner can no longer assume it will avoid. And a discretionary denial is not a victory to announce to a board. It is a postponement, and it should be described that way.

For companies that get sued, the petition is no longer the default opening move. With institution at 37 percent and falling fastest in the technologies where most petitions are filed, the decision to petition now has to account for the age of the patent, the posture of the litigation and the real chance of a discretionary denial that cannot be appealed. The money saved by skipping a weak petition is part of the analysis. So is the estoppel that follows a petition that gets instituted and lost.

For deals, the representation that a patent is "strong" needs a date on it. A freedom-to-operate analysis or a validity opinion written against 2024 institution rates is answering a different question than the one a buyer is asking in 2026. Buyers should ask which administration's rules the analysis assumed, and sellers should expect the question.

In short, counsel has to separate the patent from the policy. The statute and the Supreme Court are the durable parts, and they have not moved. Nearly everything else that practitioners treat as the system is a choice made by the current Director, reversible by the next one, and already reversed twice. Plan for the patent to be judged under rules you cannot yet see, and do not pay today's prices for a strength that expires with the administration.

Notes

[1] Binding. Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014); Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012); Amgen Inc. v. Sanofi, 598 U.S. 594 (2023). https://supreme.justia.com/cases/federal/us/573/208/

[2] Statute. Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011), codified in relevant part at 35 U.S.C. §§ 311–319. https://www.govinfo.gov/content/pkg/PLAW-112publ29/pdf/PLAW-112publ29.pdf

[3] Binding. 35 U.S.C. § 314(a). The Supreme Court treated the institution determination as discretionary in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), and read the Director's discretion to decline institution as broad in Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. 261 (2016). https://www.law.cornell.edu/uscode/text/35/314

[4] Binding. Cuozzo, 579 U.S. 261 (2016); Thryv, Inc. v. Click-To-Call Technologies, LP, 590 U.S. 45 (2020) (applying § 314(d) to bar review of the § 315(b) time bar as applied at institution). https://www.supremecourt.gov/opinions/19pdf/18-916_f2ah.pdf

[5] Binding. Oil States Energy Services, LLC v. Greene's Energy Group, LLC, 584 U.S. 325 (2018); United States v. Arthrex, Inc., 594 U.S. 1 (2021). https://www.supremecourt.gov/opinions/20pdf/19-1434_ancf.pdf

[6] Agency guidance (superseded in part by later Office guidance and by the MPEP). USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019). https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf

[7] PTAB precedent, designated precedential. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020). https://www.uspto.gov/sites/default/files/documents/IPR2020-00019,%20Apple%20v.%20Fintiv,%20Paper%2011%20(3.20.20).pdf

[8] Agency guidance, rescinded. Memorandum from Director Katherine K. Vidal to Members of the Patent Trial and Appeal Board, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022), rescinded February 28, 2025. https://www.uspto.gov/sites/default/files/documents/interim_proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf

[9] USPTO data. Patent Trial and Appeal Board, Trial Statistics, November 2025, at 6–7 (institution by petition of 66, 67 and 68 percent for fiscal years 2022 through 2024; by patent, 69, 72 and 74 percent). https://www.uspto.gov/sites/default/files/documents/Trial_Stats_November_2025.pdf

[10] Withdrawn proposed rule, and agency guidance. USPTO, Patent Trial and Appeal Board Rules of Practice for Briefing Discretionary Denial Issues, 89 Fed. Reg. 28,693 (proposed Apr. 19, 2024), withdrawn at 90 Fed. Reg. 48,342 (Oct. 17, 2025); USPTO, 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence, 89 Fed. Reg. 58,128 (July 17, 2024). https://www.govinfo.gov/content/pkg/FR-2025-10-17/pdf/2025-19587.pdf

[11] Agency guidance, interim. Memorandum from Acting Director Coke Morgan Stewart to All PTAB Judges, Interim Processes for PTAB Workload Management (Mar. 26, 2025). https://www.uspto.gov/sites/default/files/documents/InterimProcesses-PTABWorkloadMgmt-20250326.pdf

[12] PTAB decisions applying Office policy. The Acting Director denied institution on "settled expectations" grounds beginning in June 2025, see iRhythm Technologies, Inc. v. Welch Allyn, Inc., IPR2025-00363, Paper 10 (P.T.A.B. June 6, 2025) (Stewart, Acting Director). https://ptacts.uspto.gov/ptacts/public-informations/petitions/1557302/download-documents?artifactId=NfOGTmE79TtqYpVn_rFoS3FXhzaCtP_DkOntBpmCwfIgEpAKjgX5flY

[13] Official record. Nomination PN26-44, 119th Congress, confirmed by the Senate, 51–47, September 18, 2025, Record Vote No. 526. https://www.congress.gov/nomination/119th-congress/26/44

[14] Agency guidance. Memorandum from Director John A. Squires to All PTAB Judges, Director Institution of AIA Trial Proceedings (Oct. 17, 2025). https://www.uspto.gov/sites/default/files/documents/Director_Institution_of_AIA_Trial_Proceedings.pdf

[15] Proposed rule, not final. USPTO, Revision to Rules of Practice Before the Patent Trial and Appeal Board, 90 Fed. Reg. 48,335 (proposed Oct. 17, 2025) (to be codified at 37 C.F.R. pt. 42); comment period closed November 17, 2025. No final rule had been published as of this writing. https://www.govinfo.gov/content/pkg/FR-2025-10-17/pdf/2025-19580.pdf

[16] Agency guidance, current. USPTO, Revised Inventorship Guidance for AI-Assisted Inventions, 90 Fed. Reg. 54,636 (Nov. 28, 2025), rescinding in full the guidance at 89 Fed. Reg. 10,043 (Feb. 13, 2024). https://www.govinfo.gov/content/pkg/FR-2025-11-28/pdf/2025-21457.pdf

[17] USPTO data. Patent Trial and Appeal Board, Trial Statistics, November 2025, at 6. Fiscal 2026 figures cover October 1 through November 30, 2025, and are year-to-date rather than full-year. https://www.uspto.gov/sites/default/files/documents/Trial_Stats_November_2025.pdf

[18] USPTO data. Id. at 7–8. The technology figures cover the same two months and exclude outcomes on rehearing.

[19] Final rule. USPTO, Setting and Adjusting Patent Fees During Fiscal Year 2025, 89 Fed. Reg. 91,898 (Nov. 20, 2024), effective January 19, 2025. The rule states that it sets or adjusts 433 patent fees, including 52 new fees. https://www.govinfo.gov/content/pkg/FR-2024-11-20/pdf/2024-26821.pdf

[20] Pending legislation. S. 1546, 119th Cong. (2025), introduced May 1, 2025, by Senator Tillis and referred to the Senate Judiciary Committee. The Committee held a full hearing, "From Genes to Machines: the Patent Eligibility Debate," on July 14, 2026. https://www.congress.gov/bill/119th-congress/senate-bill/1546

[21] Pending legislation. S. 1553, 119th Cong. (2025), introduced May 1, 2025, by Senator Coons and referred to the Senate Judiciary Committee. https://www.congress.gov/bill/119th-congress/senate-bill/1553

[22] Statute. 35 U.S.C. § 315(e) (estoppel applies to a petitioner after a final written decision). https://www.law.cornell.edu/uscode/text/35/315

 
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