The US Patent and Trademark Office (USPTO or Office) has issued a Notice of Proposed Rulemaking (NPRM) modifying the rules of practice for inter partes reviews (IPRs) before the Patent Trial and Appeal Board (PTAB or Board).
According to the Notice,
The Office is proposing new rules of practice before the PTAB to focus inter partes review proceedings on patent claims that have not previously been challenged in litigation or where prior litigation was resolved at an early stage. This proposed rule is intended to promote fairness, efficiency, and predictability in patent disputes.
As the Notice points out,
In 2011, Congress passed the America Invents Act (AIA) to “provid[e] a quick and cost-effective alternative[]” to district court patent litigation, most notably through inter partes review (IPR) proceedings.
Also,
In an IPR proceeding, the petitioner needs to prove unpatentability by only a preponderance of the evidence, which is the same standard the Office used to grant the patent.
As the USPTO explains,
IPR proceedings have many advantages, but are not appropriate in every circumstance. When IPR proceedings cover the same ground as district court litigation, they cease to be an “alternative” and can substantially increase litigation costs. That is the opposite of what Congress intended. Serial or parallel IPR proceedings can also be wasteful, because they consume Office and party resources re-litigating issues that the Office is considering, has already considered, or that are being litigated elsewhere, such as in district court or at the U.S. International Trade Commission (ITC). Finally, multiple challenges to the same patent through IPRs jeopardize the reliability of patent rights and incentives to invest in new technologies.
The Notice notes that
Approximately 54% of all IPR petitions filed since the passage of the AIA are one of multiple petitions against the same patent.
Also,
more than 80% of IPRs have co-pending district court litigation where the petitioner is also challenging patent validity.
The Notice states in boldface italics that “Even extremely strong patents become unreliable when subject to serial or parallel validity challenges.”
The Office notes that
By far, the most frequent users of IPR proceedings are large technology companies. When a large company is free to copy a patented invention because it believes it can invalidate the patent through multiple validity challenges, the large company’s other advantages, such as superior brand recognition and manufacturing scale, will often give it an edge over smaller competitors. Thus, weakened patent rights can contribute to market concentration in innovative industries.
According to the Patent Office,
Determining whether a patent claim meets the statutory requirements of patentability is frequently a matter of judgment about which reasonable minds may disagree. For example, new technologies are often complex. Both the prior art and claim language may be open to multiple interpretations. The possibility of hindsight bias is also an ever-present difficulty. Because reasonable minds may, and frequently do, disagree about whether a particular patent claim meets the statutory requirements, patents cannot serve their economic function if they are perpetually subject to de novo review.
The Notice presents a hypothetical patent claim where 70% of experienced patent practitioners would conclude that the claim was properly granted, and 30% would oppose that conclusion.
According to the USPTO,
Such a patent claim seems reliable, because a substantial majority of practitioners believe it is patentable and was properly issued. However, if the patent is subjected to repeated de novo patentability review each time it is enforced, it will no longer be reliable. For example, a patent with a 70% chance of surviving one de novo patentability review has less than a 50% chance of withstanding two or more de novo patentability challenges. Thus, even extremely strong patents depend on a presumption of validity for their survival.
This proposed rule is intended to focus IPR proceedings on “the most appropriate disputes.”
According to a press release issued by the USPTO in connection with the proposed rulemaking, the proposed new rule would:
- Require an IPR petitioner to file a stipulation not to pursue invalidity challenges under 35 U.S.C. §§ 102 or 103 in other forums;
- Provide that the USPTO will not institute an IPR when the USPTO or another forum already has adjudicated patentability or validity of the claims;
- Provide that the USPTO will not institute an IPR when another proceeding is likely to determine patentability or validity of the claims under §§ 102 or 103 first; and
- Permit the USPTO to institute an IPR notwithstanding a prior adjudication or expected earlier determination on patentability or validity when exceptional circumstances exist.
Patent law practitioners commenting on the proposed new rule are divided, with some praising the USPTO’s quest for efficiency and certainty, and others saying the change would lead to more federal district court litigation, which is seen as costlier, slower, and more complex than PTAB proceedings.
Comments on the proposed rulemaking must be submitted through the Federal eRulemaking Portal at: https://www.regulations.gov. To submit comments via the portal, one should enter docket number PTO-P-2025-0025 on the homepage and select the “Search” button. The deadline to comment is November 17, 2025.
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