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The United States Patent and Trademark Office (USPTO) has proposed significant changes to the rules governing Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). These revisions aim to enhance fairness, efficiency, and predictability in patent disputes, while curbing duplicative and costly litigation. Notably, these changes do not apply to Post-Grant Review (proceedings that must be filed within nine months of the patent issue date).
Key Proposed Rule Changes
Stipulation Requirement for Petitioners
Under proposed § 42.108(d), petitioners must stipulate that they will not pursue invalidity challenges under 35 U.SC. §§ 102 or 103 in any other venue if an IPR is instituted. These venues include district court and the International Trade Commission (ITC). The USPTO's rationale for this proposal is to ensure IPRs serve as a true alternative, not an addition, to litigation. This stipulation must be filed with the PTAB and the other venue if a case is pending in the other venue. Estoppel under 35 U.S.C. § 315(e)(1)-(2) still applies.
Claims Previously Found Valid
Proposed § 42.108(e) bars institution of IPRs if the challenged claims—or their independent claims—have already been found valid or patentable under 35 U.SC. §§ 102 or 103 in:
- District court trials or summary judgment;
- ITC determinations;
- PTAB final written decisions;
- Ex parte reexaminations (requested by someone other than the patent owner or related parties); and
- Federal Circuit reversals of invalidity findings.
Parallel Litigation Timing
Under proposed § 42.108(f), IPRs will not be instituted if a decision on validity is likely to occur in another venue before the PTAB's final decision.
Extraordinary Circumstances Exception
Proposed § 42.108(g) allows exceptions only in rare cases, such as bad faith prior challenges or major legal changes. Routine new evidence or arguments do not qualify.
Comments on the proposed rule should be added to docket number PTO-P-2025-0025 no later than November 16, 2025. Visit the Federal eRulemaking Portal for additional instructions on providing comments via the portal.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
