US Patent and Trademark Office/USPTO Archives

USPTO introduces voluntary search disclosure declarations in Board proceedings

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.

Pick a lane: USPTO Director nixes IPR for inconsistent claim construction positions

The Director of the United States Patent and Trademark Office (USPTO) vacated a Patent Trial & Appeal Board decision instituting an inter partes review (IPR) proceeding after finding that the petitioner advanced inconsistent claim construction positions before the Board and in parallel district court litigation without adequate justification. Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340 (PTAB Nov. 5, 2025) (Stewart, USPTO Dir.)

Intellectual Ventures II LLC (IV), the patent owner, requested director review of the Board’s decision granting institution, arguing that the decision should be reversed because Tesla, Inc., the petitioner, failed to adequately explain why it advanced inconsistent claim construction positions before the district court and the Board.

In the district court, Tesla opposed IV’s plain and ordinary meaning construction of the claim limitation “generating said target feature information from said data statistics” in independent claim 1. Tesla argued that the limitation was indefinite because a person of ordinary skill in the art could not determine its meaning and scope with reasonable certainty. In contrast, before the Board, Tesla asserted that “no claim term requires express construction” and that the challenged claims should be given their plain and ordinary meaning.

IV contended that Tesla’s justification (that it was statutorily prohibited from raising indefiniteness challenges in an IPR) was insufficient to explain the divergent positions. While the Board’s rules do not categorically prohibit petitioners from taking inconsistent claim construction positions across forums, petitioners must explain why those differences are warranted.

The Director agreed with IV, finding Tesla’s rationale inadequate. The Director explained that simply asserting that indefiniteness cannot be raised in an IPR does not explain why a petitioner should be permitted to raise inconsistent invalidity challenges in two forums. In vacating the institution decision, the Director emphasized that permitting such inconsistencies without proper justification would undermine the USPTO’s goal of “providing greater predictability and certainty in the patent system.”