The Director of the US Patent and Trademark Office (USPTO) issued a memorandum announcing a new initiative aimed at improving examination quality and transparency in Patent Trial & Appeal Board proceedings.
Effective immediately, petitioners in inter partes review (IPR) and post-grant review (PGR) proceedings may submit a search disclosure declaration (SDD) that explains in detail:
- Databases and repositories consulted
- Search approach, search terms, filters, queries, and classification pathways used
- Analytics or publicly accessible resources referenced
- Time spent searching and reviewing results
- Any other relevant methodology details
The submission is voluntary, and petitioners that do not provide an SDD will not be penalized. However, when deciding whether to institute a proceeding, the Board will view submission of an SDD as a favorable discretionary factor, especially if the SDD reveals new or underutilized search pathways relevant to USPTO practices. The SDD may also help demonstrate potential USPTO error during examination, according to the memorandum.
The SDD can be filed confidentially under 37 C.F.R. § 42.14, with a motion to seal and request for in camera review. Protective orders must allow the USPTO to use the information for internal training and analytics. Confidential SDDs will not be publicly disclosed except as required by law, and deposition testimony related to an SDD will generally not be permitted.
Practice note: While optional, submitting an SDD can strengthen an IPR or PGR petition by signaling transparency and contributing to improved USPTO practices. Consider incorporating this step into your Board strategy, especially when leveraging sophisticated search tools or methodologies that the USPTO does not typically use during examination.
