Note on Revision to Rules of Practice before the Patent Trial and Appeal Board
On October 17, 2025, the United States Patent and Trademark Office posted proposed revisions to the rules of practice before the Patent Trial and Appeal Board. See https://www.govinfo.gov/app/details/FR-2025-10-17/2025-19580. Time for comment closes November 17, 2025.
The Proposed Rules would change which patents are subject to inter partes review and limit the ability of patent challengers to invalidate patents. The USPTO states that the goals of the Proposed Rules are to:
- Curb serial and parallel patent validity challenges.
- Focus IPRs on patents not previously tested in court or other USPTO proceedings.
- Enhance fairness, efficiency, and predictability in the patent system.
The USPTO believes that multiple or duplicative challenges erode confidence in patent reliability, increase costs, and discourage investment, especially by small and medium-sized innovators. The idea is that IPRs were designed as a substitute for litigation, not an additional layer. The Proposed Rules aim to reduce redundant reviews, increase finality of patent rights, and allocate PTAB resources toward ex parte appeals and initial examination quality.
The below is a brief summary of the changes introduced by the Proposed Rules.
Key Proposed Rule Changes (37 CFR §42.108)
- Required Stipulation (§42.108(d))
- IPRs will not be instituted unless the petitioner stipulates that it (and any party in interest or privy) will not pursue invalidity challenges under §§102 or 103 in district court or the ITC regarding the same patent.
- The stipulation must be filed in all relevant venues.
- Claims Found Valid in Prior Proceedings (§42.108(e))
- IPR will not be instituted for claims previously upheld as valid (or “not unpatentable”) by:
- A district court (after trial or summary judgment);
- The ITC;
- The PTAB (in prior IPRs or ex parte reexaminations); or
- Affirmed by the Federal Circuit after reversal of an invalidity finding.
- IPR will not be instituted for claims previously upheld as valid (or “not unpatentable”) by:
- Parallel Litigation (§42.108(f))
- No IPR will be instituted if a district court trial, ITC determination, or PTAB final written decision on the same claims is likely before the PTAB’s final written decision deadline.
- Extraordinary Circumstances (§42.108(g))
- The Director may personally authorize IPR institution despite the above restrictions only in extraordinary cases, e.g.:
- Prior challenges brought in bad faith, or
- Major statutory or Supreme Court changes affecting validity law.
- “Extraordinary” does not include new prior art, new expert testimony, or failure to appeal prior decisions.
- The Director may personally authorize IPR institution despite the above restrictions only in extraordinary cases, e.g.:
Takeaway
The Proposed Rules indicate that the USPTO will continue to strengthen patent rights under the direction of new director John A. Squires. Combined with the rise in discretionary denials, the Proposed Rules would further limit defendants’ abilities to invalidate asserted patents. If the Proposed Rules take effect, defendants will need to better coordinate their invalidity strategies, as patents could become “IPR proof” if a prior validity challenge fails.
