USPTO Restores PTAB Merits-Based Decisions
The PTO signals a shift in patent adjudication that could reshape appeal strategies.
The U.S. Patent and Trademark Office (PTO) announced on November 10, 2026 that the Patent Trial and Appeal Board (PTAB) will again decide whether an appeal from a USPTO office action will be remanded to the examining attorney or sent directly to the PTO. Previously, a statutory review process had disallowed PTAB‑based merits decisions for certain warrantable patents, effectively limiting the board's role to administrative review. By re‑introducing merits‑based adjudication, the PTO expands PTAB’s authority to thoroughly assess patentability, enforcement, and validity at the appeal stage. For counsel, this means appeal strategies must now fully anticipate a consequential patent claim analysis rather than a procedural remand. Major firms with large patent portfolios should review current appeal guidelines, update reliance affidavits, and consider early PTAB briefing under the new framework. Watch for subsequent guidance from the PTO on the scope of merits cases and any changes to fee structures tied to the PTAB’s expanded role.