USPTO Offers Favorable Institution Factor for Disclosing Search Methods
"Show your work!"
The U.S. Patent and Trademark Office (USPTO) announced an initiative, effective immediately, that introduces an “optional practice that allows petitioners in inter partes review (IPR) and post-grant review (PGR) proceedings to submit information describing how asserted prior art was identified” (Announcement, ¶ 1). In a memorandum issued November 17, 2025, the Director outlined a plan to favorably consider the submission of a “Search Disclosure Declaration” (SDD) when deciding whether to institute an America Invents Act (AIA) trial.
This voluntary program encourages petitioners to provide detailed information about the prior art search conducted for the petition. The USPTO’s stated goal is to capture insights from “sophisticated search methodologies, repository knowledge, and/or analytics not routinely used by the Office” (Memo, ¶ 2), with the intent of “meaningfully improv[ing] Office search practices and, over time, improv[ing] examination quality” (Memo, ¶ 3).
The Search Disclosure Declaration: What to Include
The memorandum specifies that petitioners who opt-in may submit an SDD that “explains, in detail” (Memo, ¶ 4):
“the databases and repositories in which the asserted prior art was located” (Memo, ¶ 5)
“the general search approach, search terms, filters, queries, or classification pathways employed” (Memo, ¶ 6)
“other analytics or publicly accessible resources consulted” (Memo, ¶ 7)
“the amount of time spent on the search” (Memo, ¶ 8)
“the amount of time spent reviewing search results” (Memo, ¶ 9)
The USPTO states that a petitioner who chooses not to provide an SDD “will not be disadvantaged” (Memo, ¶ 11; Announcement, ¶ 3).
For those who do participate, the SDD must be filed “as a standalone exhibit at the time the petition is filed” (Memo, ¶ 14). Apparently, there will be an FAQ coming.
For cases already filed but where the patent owner’s preliminary response deadline has not passed, petitioners “may file an SDD within seven business days of this memorandum” (Memo, ¶ 15).
The Incentive and the Internal Use
The primary incentive for petitioners is that the “voluntary submission of an SDD will be considered as a non-exclusive, non-dispositive favorable discretionary factor supporting institution,” particularly “where the SDD reveals new or underutilized pathways relevant to Office search practice” (Memo, ¶ 12).
This information, however, is not just for the case file. The USPTO announcement clarifies that the collected information will be used internally to “enhance examiner training, refine classification pathways, and inform development of AI-enhanced search tools” (Announcement, ¶ 4).
To address potential confidentiality concerns, petitioners may designate the SDD as “Business Confidential Information” (Announcement, ¶ 4) or file it “with a motion to seal” (Memo, ¶ 16). Even when designated confidential, it appears this information may be “used internally to enhance examiner training, refine classification pathways, and inform development of AI-enhanced search tools” (Announcement, ¶ 4).
The memo notes that any “proposed protective order must indicate that the Office may use the information in a SDD for internal training, improving examination processes, and analytics” (Memo, ¶ 17).
Furthermore, the memo attempts to preempt discovery battles by stating, “Absent extraordinary circumstances, deposition testimony related to an SDD will not be permitted” (Memo, ¶ 19).
The Larger Context: Director-Level Discretion
This SDD initiative arrives just weeks after a significant procedural shift in AIA trial institution. Effective October 20, 2025, Director Squires announced that the Director’s office, rather than the Patent Trial and Appeal Board (PTAB), will personally determine whether to institute IPR and PGR proceedings.
This move centralizes authority that was previously delegated to the Board. The stated rationale is to align with the statutory framework of 35 U.S.C. § 314(a), which vests institution authority in the USPTO Director. The change is reportedly intended to address “structural, perceptual, and procedural concerns,” including the “appearance that institution decisions affect docket size.” Under this new process, the Director consolidates both discretionary and merits-based reviews into a single decision, often issued as a “summary notice.” Several cases have been summarily dismissed like this already.
This consolidation of power has drawn both support and sharp criticism. Proponents see it as a move to strengthen patent rights and ensure consistent application of discretionary denial standards. Critics, however, have raised substantial objections. Some argue the move is contrary to congressional intent, which they believe obviously assumed that the Director would delegate this function to the PTAB, et al.
Former USPTO Solicitor Thomas W. Krause reportedly characterized the “summary notice” rulings as the “antithesis of transparency,” suggesting they will “foster distrust” by concealing the basis for denials. Furthermore, some legal analyses call the plan “almost certainly unlawful,” alleging it violates the Administrative Procedure Act (APA) by effectively repealing USPTO regulations—which delegate authority to the Board—through an internal memo instead of formal notice-and-comment rulemaking.
This new SDD program, offering a “favorable discretionary factor,” should be viewed within this new framework, where all institution decisions, including all discretionary factors, are now centralized in the Director’s office.
SDD submissions could open a safe passage through the director discretion waters, but the process could be viewed as a mere token gesture.
Is USPTO really looking for direction towards new areas for missing prior art or is this a setup to a “told you so” punchline?
Analysis: Benefits, Challenges, and Risks
This new program presents a strategic calculation for IP practitioners.
For petitioners, the potential of a “favorable” factor is attractive, especially in a legal environment where the Director’s discretion plays a significant role in institution decisions. A well-crafted SDD might provide a slight edge. The memo also suggests an SDD “may be helpful in demonstrating Office error during examination” (Memo, ¶ 13), offering another avenue of argument for the petitioner. In the long term, if the USPTO’s goal is realized, all stakeholders could benefit from improved examination quality and stronger-issued patents.
The immediate challenge is ambiguity. The memo provides no standard for what constitutes a “bona fide” (Announcement, ¶ 3) or sufficient SDD. Petitioners and their search firms must now document their work in a new way, tracking time and methodology with the expectation of submitting it to the USPTO. This adds a layer of administrative burden and cost to the petition process.
The most significant risks center on confidentiality and future litigation.
Proprietary Methods: Expert search firms and law firms often rely on proprietary, hard-won search strategies. Many may be reluctant to disclose their “secret sauce”—even in a sealed filing—knowing the information will be used to train USPTO systems, including AI. The prospect of training the Office’s “AI-enhanced search tools” (Announcement, ¶ 4) with data derived from a firm’s own expert work product is a notable concern.
Data Security: While the SDD can be filed under seal, IP professionals remain cautious about submitting highly sensitive internal work product. The risk of inadvertent disclosure or data breaches is a persistent concern. Generating any document that describes an internal process or policy carries risk.
New Attack Surface: The memo’s attempt to bar depositions related to the SDD with the “absent extraordinary circumstances” (Memo, ¶ 19) carve-out is a standard legal hedge, not an ironclad guarantee. Patent owners may attempt to argue that “extraordinary circumstances” exist to challenge the “bona fide” nature of the search, potentially creating a new, and untested, area of discovery conflict in AIA proceedings or at district court.
What is Enough?
The initiative raises immediate, practical questions for petitioners. The memo’s lack of specificity leaves a significant gap in understanding what level of disclosure will be deemed “favorable.” The USPTO has indicated that “Frequently Asked Questions” are forthcoming (Announcement, ¶ 6), but until then, practitioners are left to consider several points:
Defining “Sufficient”: What truly constitutes a “bona fide submission” (Announcement, ¶ 3)? Is the USPTO looking to identify new domestic or foreign-language databases? Or is the focus on methodology, such as revealing the use of a new AI-powered search tool that located art missed by traditional keyword and classification searches?
Comparison to Examiner Searches: Patent examiners are required to document their search strategy in the file history. Will an SDD that simply mirrors that level of detail be sufficient, or is the expectation higher? This leads to a tactical question: would a declaration that actively criticizes the original examiner’s search be looked upon favorably as “demonstrating Office error” (Memo, ¶ 13), or would it be viewed negatively?
Targeting Crowdsourced Art: The program could be seen as a way to gain insight into the methods of organizations like Unified Patents, which has incentivized third-party art submissions. How will such crowdsourced or “contest”-based search efforts be documented in an SDD?
Reproducibility and “Enablement”: Is there a reproducibility requirement? Must the described methodology yield positive hits for art in a separate, ongoing examination? Or is this more akin to an “enablement” or “best mode” requirement, where the petitioner must describe the search process in enough detail for an examiner to replicate it?
These ambiguities underscore the current uncertainty. The value of the SDD seems to be in its utility to the Office’s internal training and tool development.
Strategic Considerations
The new Search Disclosure Declaration presents petitioning parties with a distinct choice, one that is amplified by the recent centralization of institution authority. The SDD is not a simple procedural checkbox. Its value as a “favorable factor” (Announcement, ¶ 3) will likely depend entirely on how the Director’s office, which now personally reviews these filings, perceives the submission’s value.
This transforms the SDD from a mere factual report into a persuasive document. Its goal is to demonstrate not only that the search was thorough, but that it provided the kind of “new or underutilized pathways” (Memo, ¶ 12) the Director personally wishes to capture for internal training.
Petitioners must now weigh the potential, but undefined, benefit of appealing directly to this new, highly discretionary framework against the clear costs of increased documentation and the significant risks of disclosing confidential search methodologies, training the USPTO’s AI, and possibly opening a new front for litigation.
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.