Nisha Shetty

18 March 2026

The latest memo from the US Patent and Trademark Office is ambitious, but some
attorneys wonder if it is fitting a square peg into a round hole by seeking to achieve
trade objectives through the patent system.

The memo, issued by USPTO director John Squires on 11 March, adds to the list of
discretionary factors to be considered when deciding whether to institute of inter
partes reviews and post grant reviews. The first and second factors appear to favour
protection of patents owned or licensed by American manufacturers, while the third
seems to provide additional protections to patents infringed by large businesses as
opposed to small ones.

The memo applies to all IPR and PGR petitions for which the due date for the patent
owner’s discretionary brief has not yet elapsed.

At IAM, we spoke to several attorneys about the memo. Some questioned whether the
aim to strengthen American manufacturing is best achieved through the patent system,
and doubted whether the new discretionary factors have anything to do with patent
law. They also raised concerns about the difficulty of assessing trade-related factors as
part of PTAB institution decisions. Others saw an opportunity for creative arguments to
flourish. All agreed that parties will have to wait to see how the new discretionary
factors will be applied.

USPTO memo

Squires called to attention that in recent decades “substantial segments” of the US
manufacturing base have moved overseas, “particularly in the electronics and
computer industries”. He suggested that the resulting “significant economic and
national security damage” required him to consider the “effect of institution standards
on the economy and the integrity of the patent system”.

The USPTO will now consider the following when determining whether to institute
IPRs and PGRs:
– the extent to which any products accused of infringement in a parallel
proceeding are manufactured in the US or are related to investments in American
manufacturing operations;
– the extent to which any products made, sold or licensed by the patent owner that
compete with the accused products are manufactured in the US; and
– whether the petitioner is a small business that has been sued for infringement of
the patent at issue.

Using patents to boost US manufacturing

“A charitable reading is that this is an attempt to use patent office policy to then affect
trade policy, which is certainly novel,” says Kit Crumbley, an attorney at Bracewell and
a former administrative patent judge at the Patent Trial and Appeal Board. “I don’t
know how many corporations are going to be making manufacturing decisions based
on the availability of IPR. It’s a very small tool to try and pull a very big lever. I’m not
sure it’s going to make a difference to the Samsungs or the Apples of the world.”

Attorneys say it is clear that the USPTO’s intent is to bring manufacturing back to the
US but question whether this is the best way to tackle the issue.

Wendy Verlander, an attorney at Verlander, echoes the sentiment. “At the end of the
day, why should the validity of a patent be based on where a defendant or a patent
owner manufactures their products, or whether the patent owner is going after a small
or big company?” she asked. “None of that is tethered to the patent statute.”

She adds that there are enough issues with the patent system itself, and trying to
influence policy through the patent system is over-ambitious.

Increasing manufacturing in the US is a good goal, but there must be a better way to
implement it, believes Verlander. “This is definitely trying to fit a square peg into a
round hole,” she says.

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