Voluntary Search Disclosure Declarations as a Favorable Factor in Institution Decisions

The memorandum lets IPR and PGR petitioners voluntarily submit a Search Disclosure Declaration (SDD) describing how they located the asserted prior art. The Office will treat a voluntary SDD as a non-exclusive, non-dispositive favorable discretionary factor supporting institution, particularly where it reveals new or underutilized search pathways. It also sets timing, sealing and deposition rules for SDDs. Petitioners relying on art the examiner did not identify gain an optional way to add weight to the discretionary institution analysis, and an SDD may also help show Office error during examination. Petitioners who file none are expressly not disadvantaged. Patent owners should expect SDDs in petitions and should know that, absent extraordinary circumstances, deposition testimony related to an SDD will not be permitted. The memorandum cites 37 C.F.R. § 42.14 for filing an SDD under seal with a request for in camera review, and any proposed protective order must permit Office use of SDD information for internal training, improving examination processes, and analytics. WHAT IT DOES: Allows a petitioner to submit an SDD explaining in detail the databases and repositories where the asserted prior art was found; the general search approach, search terms, filters, queries or classification pathways; other analytics or public resources consulted; time spent searching; and time spent reviewing results. Other relevant search-methodology information may be added. Submission is entirely voluntary and non-submission carries no disadvantage. A voluntary SDD is a non-exclusive, non-dispositive favorable discretionary factor for institution and may help show Office error. It may be filed as Filing Party and Board only, with a motion to seal and a request for in camera review under 37 C.F.R. § 42.14; if confidential it will not be publicly disclosed except as required by law; any proposed protective order must allow Office internal use; absent extraordinary circumstances, no related deposition testimony. WHO AND WHEN: Applies to IPR and PGR petitioners under the AIA, effective immediately on November 17, 2025, to all IPR and PGR proceedings in which the patent owner preliminary response due date has not yet elapsed. For new petitions, the SDD must be a standalone exhibit filed with the petition. For petitions already filed, an SDD may be filed within seven business days of the memorandum. KEY QUOTE: "An SDD submission is entirely voluntary." (p. 1) EARLIER GUIDANCE AFFECTED: None identified in the document. PRACTICE TIP: If the prior art was found through search methods or resources the Office does not routinely use, decide whether to file a detailed SDD as a standalone exhibit with the petition, or within seven business days for pending petitions, and consider sealing it under 37 C.F.R. § 42.14 while accepting the required Office-use language in any protective order. Issued by John A. Squires, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.