The United States Patent and Trademark Office (USPTO) has announced a new initiative aimed at enhancing patent quality and leveraging public expertise. Effective immediately, in inter partes review (IPR) and post-grant review (PGR) proceedings, petitioners are encouraged to submit a Voluntary Search Disclosure Declaration (SDD). The Office will consider a voluntarily submitted SDD as a favorable, non-dispositive factor when deciding whether to institute a proceeding.
Background and Rationale
In AIA post-grant proceedings, petitioners often uncover prior art that was not previously considered by the USPTO examiner. This can be due to specialized search methodologies, access to specific databases, or analytical tools not routinely used during examination.
Recognizing this, the USPTO has established the SDD framework to capture these valuable search strategies. The goal is to integrate these insights into the Office's internal training and processes, leading to a sustained improvement in patent examination quality for all stakeholders.
What is a Search Disclosure Declaration (SDD)?
An SDD is a voluntary statement in which a petitioner explains, in detail, the methodology behind its prior art search. A comprehensive SDD should describe:
The specific databases, repositories, and publicly available resources consulted.
The search strategy employed, including search terms, queries, filters, or classification pathways.
The approximate time spent conducting the search and reviewing the results.
Any other relevant information regarding the search methodology.
It is critical to note that submission of an SDD is entirely voluntary. A petitioner will not be penalized for choosing not to file one.
Strategic Value of Submitting an SDD
The primary incentive for submitting an SDD is its potential to positively influence the institution decision. The USPTO will consider a voluntary SDD as a non-exclusive, favorable factor supporting the grant of a petition. This is particularly true if the declaration reveals new or underutilized search pathways that could benefit Office practice.
Additionally, an SDD may serve as a useful tool in demonstrating that relevant prior art was overlooked during the original examination.
Filing Requirements and Confidentiality
Timing: For new petitions, an SDD must be submitted as a standalone exhibit at the time of filing. For petitions already filed, a petitioner may submit an SDD within seven business days of the November 17, 2025 memorandum.
Confidentiality: Petitioners may file an SDD under a motion to seal, requesting in camera review. Any proposed protective order must allow the USPTO to use the information for internal training and process improvement. If accepted as confidential, the SDD will not be made public except as required by law. The Office also notes that deposition testimony related to an SDD will generally not be permitted.
Key Takeaways and Strategic Considerations
This new guidance introduces a strategic consideration for any party preparing an IPR or PGR petition. By voluntarily sharing a well-documented search methodology, petitioners have an opportunity to not only strengthen their case for institution but also to contribute to the enhancement of the patent system.
We recommend evaluating the potential benefits of preparing an SDD as part of the initial petition drafting process, especially when a novel or highly effective search strategy was employed.
This guidance is effective immediately and applies to all pending IPR and PGR proceedings where the patent owner's preliminary response deadline has not yet passed.
Source: United States Patent and Trademark Office (USPTO) Memorandum
Declaim: This alert is for informational purposes only and does not constitute legal advice. The specific facts of your case should be discussed with qualified legal counsel.
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