Deeper Implications of the PTAB Memo: Quality, Burden of Proof, and AI
Every challenged element must have a citation to a reference
Beyond the immediate procedural shift, the Acting Director’s July 31, 2025 memorandum signals broader institutional priorities and reaffirms the new tone for patent challenges submitted to the USPTO under Acting Under Secretary of Commerce for IP and Acting Director Coke Morgan Stewart. The new policy eliminates a Patent Trial and Appeal Board (PTAB) petitioner's ability to use evidence like applicant admitted prior art (AAPA), expert testimony, or common sense to bridge gaps in the cited prior art [¶ 2, 16]. Every challenged element must have a citation to a reference.
This policy can be viewed through the lens of three significant takeaways for IP practitioners. The shift promises greater consistency for patent owners and the PTAB but imposes a significant new burden on those seeking to invalidate patents. It also may signal considerations when using AI-based tools.
Consistency
First, the directive reaffirms the agency's recent focus on procedural integrity and consistency. By enforcing this bright-line rule, the USPTO aims to provide "certainty to the parties, the Board, and the public."
The memo underscores a commitment to the "integrity of the patent system" and the "efficient administration of the Office."
In recent prior moves to reshape post-grant proceedings, the Director has implemented a bifurcated IPR review process and is encouraging earlier validity challenges, such as post-grant reviews, over later-stage petitions.
In light of the other new PTAB policies under Acting Director Stewart, the new memo solidifies a vision where clear, predictable rules are paramount for maintaining the quality and reliability of the patent system and its review proceedings.
Petitioners Have a High Burden
Second, the policy clarifies the role of the PTAB by placing the entire burden of proof squarely on the petitioner at the institution phase. The message is that the Board will no longer connect the dots or fill in gaps for a petitioner's argument.
The requirement that a petition must serve as the "clear means for... identifying the petitioner's legal and factual basis" for a challenge means that an incomplete argument will fail at the outset.
This marks a retreat from a more inquisitive role, ensuring that the PTAB adjudicates only fully articulated challenges, rather than assisting in their construction.
Along with the bifurcated PTAB process, a new "settled expectations" factor now informs discretionary denials, allowing the significant time a patent has been in force to weigh against instituting a review. Collectively, these reforms seek to enhance the stability of issued patents by protecting the reliance interests of long-standing patent holders and focusing validity disputes toward the beginning of a patent's term.
Similarly, with the new memo, the responsibility now rests solely with the petitioner to present a case that stands on its own, based exclusively on patents and printed publications.
AI Policy Implications
Finally, while the memorandum does not mention Artificial Intelligence, its strict standard has clear implications for the use of emerging AI tools in patent practice.
The policy's insistence on an explicit, verifiable mapping for every claim element sends a message about the current limitations of automation in legal argumentation.
In an environment where practitioners (and examiners) are exploring AI for prior art searching and analysis, this rule serves as a guardrail. It implicitly cautions that any output from an AI tool is not, by itself, evidence.
The ultimate legal argument must be traceable to the source documents, a standard that prevents reliance on an AI's inference or summary—a potential "hallucination"—to supply a critical missing element of a claim.
For now, the acceptable degree of reliance on AI to fill such gaps appears to be zero.
Disclaimer: This is provided for informational purposes only and does not constitute legal or financial advice. To the extent there are any opinions in this article, they are the author’s alone and do not represent the beliefs of his firm or clients. The strategies expressed are purely speculation based on publicly available information. The information expressed is subject to change at any time and should be checked for completeness, accuracy and current applicability. For advice, consult a suitably licensed attorney and/or patent professional.