PTAB Voluntary Search Disclosure Declarations: A New Factor Supporting Institution

by | Dec 23, 2025 | Prior Art Issues, PTAB News, PTAB Trial Basics, Trial Institution

By Ruth Brindel,* Daniel Sloan, and Matt Johnson

On November 17, 2025, USPTO Director John Squires issued a memorandum introducing a new procedure allowing petitioners to submit a voluntary Search Disclosure Declaration (SDD) that explains the petitioner’s search strategy when identifying prior art for inter partes review and post‑grant review proceedings. Effective immediately, a bona fide SDD will be treated as a non‑exclusive, non‑dispositive favorable factor at institution, with no adverse inference for parties who do not participate.

Overview and Rationale

An SDD is a standalone submission explaining in detail how a petitioner found the asserted prior art, including:

  • the databases and repositories in which the asserted prior art was located;
  • the general search approach, search terms, filters, queries, or classification pathways employed;
  • other analytics or publicly accessible resources consulted;
  • the amount of time spent on the search; and
  • the amount of time spent reviewing search results.

An SDD will be considered a non-dispositive discretionary factor favoring institution, especially when it highlights new or underused search pathways relevant to Office practice. Participation is voluntary and declining to submit an SDD carries no penalty. An SDD may also help demonstrate Office error during examination, further informing the Director’s discretionary denial analysis. The USPTO aims to use these disclosures to improve Office search practices and examination quality by highlighting pathways and tools not routinely employed during examination.

Timing and Confidentiality Mechanics

For new petitions, the SDD should be submitted as a standalone exhibit at filing. For already‑filed petitions, the SDD should have been submitted by November 26, 2025 (i.e., within seven business days of the issued memorandum). When necessary, parties can request sealing and in camera review under 37 C.F.R. § 42.14. However, any proposed protective order must permit the Office to use SDD information for internal training and examination process improvement. That said, confidentially filed SDDs will not be publicly disclosed except when required by law. Absent extraordinary circumstances, the Office will not permit deposition testimony related to an SDD.

Takeaway: Although optional, an SDD can fortify an IPR or PGR petition, and provide search pathways that inform and improve USPTO practice. Petitioners should balance potential institution‑stage credit against confidentiality and preparation costs and consider making it part of their Board strategy when they use tools not traditionally employed by the USPTO.

* Ruth is a member of the New Lawyer’s Group in Jones Day’s Chicago Office.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.