{"id":17560,"date":"2026-05-18T20:22:50","date_gmt":"2026-05-18T20:22:50","guid":{"rendered":"https:\/\/blogs.uakron.edu\/ualawip\/?p=17560"},"modified":"2026-05-18T20:22:50","modified_gmt":"2026-05-18T20:22:50","slug":"domestic-manufacturing-as-a-discretionary-consideration-domestic-industry-at-the-ptab","status":"publish","type":"post","link":"https:\/\/blogs.uakron.edu\/ualawip\/2026\/05\/18\/domestic-manufacturing-as-a-discretionary-consideration-domestic-industry-at-the-ptab\/","title":{"rendered":"Domestic Manufacturing as a Discretionary Consideration: Domestic Industry at the PTAB?"},"content":{"rendered":"

By Michael Doane<\/em>
\n<\/em><\/strong>IPPI Scholar & Assistant Professor of Law, The University of Akron School of Law<\/em><\/span><\/p>\n

Since the beginning, the second Trump Administration indicated that the promotion of domestic manufacturing and support of small businesses would be key objectives of its economic policy.[i]<\/a> In the intellectual property sphere, support of small businesses and small innovators was signaled by the filing of Statements of Interest by the U.S. Patent and Trademark Office (USPTO) and the U.S. Department of Justice in two patent infringement actions seeking to clarify when injunctive relief for small entities was appropriate.[ii]<\/a> Further, in several determinations, which the U.S. Court of Appeals for the Federal Circuit (CAFC) declined to review, the USPTO exercised its discretion to deny institution of requested Inter Partes Review<\/em> (IPR) and Post Grant Review<\/em> (PGR) proceedings in apparent response to allegations of abuse of IPR and PGR procedures by large high-volume filers.[iii]<\/a> In a Memorandum dated March 11, 2026, the Director of the USPTO announced \u201cAdditional Discretionary Institution Considerations\u201d for institution of IPR and PGR proceedings relating to (1) the U.S. manufacturing operations of both the petitioner and the patent owner and (2) whether the petitioner is a small business.[iv]<\/a> These new considerations are meant to address the fact that many, if not most, of the high-volume filers requesting such proceedings do not manufacturer their products in the United States.[v]<\/a> These new discretionary considerations appear to establish something similar to the domestic industry requirement of an unfair imports investigation conducted under Section 337 of the Tariff Act of 1930 for institution of an IPR or PGR.<\/span><\/p>\n

The purpose of these new discretionary consideration factors is to ensure that IPR and PGR proceedings are not used to the detriment of U.S. manufacturing and small businesses. As noted by the USPTO, \u201csubstantial segments of the United States’s existing manufacturing base\u2014particularly in the electronics and computer industries\u2014have moved overseas.\u201d[vi]<\/a>\u00a0For example, over 95% of Apple products are manufactured in China.[vii]<\/a> IPR and PGR proceedings were purportedly developed to provide a mechanism outside of U.S. district court in which the validity of U.S. patents could be challenged more expeditiously. In practice, however, it is at best questionable whether these proceedings have benefitted the U.S. economy and U.S. intellectual property system, particularly when U.S. patents are challenged by entities with little or no commitment to U.S. manufacturing. Under such circumstances it is appropriate when deciding whether to invalidate a U.S. patent \u201cto consider the effect of institution standards on the economy and the integrity of the patent system.\u201d[viii]<\/a><\/span><\/p>\n

The United States provides various avenues to enforce or challenge patent rights with the primary venue being an infringement action or declaratory judgment action in U.S. district court. This venue is, of course, available to all. A U.S. patent owner may also enforce its patent rights against imported infringing products with an unfair import investigation before the U.S. International Trade Commission (USITC) pursuant to Section 337 of the Tariff Act of 1930. Mere ownership of a patent, however, is not sufficient to bring a Section 337 investigation successfully. The complainant must establish that it has made a significant or substantial commitment to the U.S. economy through investments in the United States in various activities related to an article that practices the asserted patent, most notably manufacturing.[ix]<\/a> In short, as a trade remedy offered\u00a0 \u201cin addition to any other provision of law,\u201d[x]<\/a> the relief granted is only available to those supporting a domestic industry in the United States.<\/span><\/p>\n

Similarly, IPR and PGR proceedings were created as a venue, in addition to U.S. district court, in which to challenge the validity of a U.S. patent. As a U.S. patent is presumed valid, institution of an IPR or PGR proceeding by the USPTO is discretionary. The new discretionary factors that the Director will consider are:<\/span><\/p>\n