The United States Patent and Trademark Office (Office) recently made two significant announcements relating to PTAB proceedings before the Patent Trial and Appeal Board (Board). First, on October 16, 2025 the Office proposed new rules aimed to "limit repeated challenges to patents" and govern IPRs. These were published in the Federal Register the next day, and the deadline for public comments is due November 17. Second, on October 17, the Director revoked the delegation of institution decisions from panels of Administrative Patent Judges (APJs) at the Board. Instead, the Director, in consultation with at least three PTAB judges, will issue summary notices granting or denying institution.
Proposed Rules: Revision to Rules of Practice Before the Board
Generally, the Office is proposing new rules to limit IPR proceedings to patent claims that have not previously been challenged in litigation or where prior litigation was resolved at an early stage. Specifically, the Office proposed following changes to 37 CFR Part 42:
- Section 42.108 (d): Required stipulation for efficiency. The Office will not institute or maintain an IPR unless the petitioner stipulates with the Board or any other tribunal where it is litigating, agreeing that if an IPR is instituted, the petitioner will not raise grounds of invalidity or unpatentability under §§ 102 or 103 in any other proceeding.
- Section 42.108 (e): Claims found valid in prior proceedings. The Office will not institute or maintain an IPR when the challenged claims (or an independent claim from which it depends) were previously found valid or not invalid in other proceedings. Such proceedings include district court trials and summary judgment decisions, ITC trials, other IPRs, post-grant reviews (PGRs), ex parte reexaminations, and Federal Circuit appeals.
- Section 42.108 (f):< em>Parallel Litigation. The Office will not institute or maintain an IPR when a parallel proceeding is likely to reach a decision regarding the validity of the patent under §§ 102 or 103 before the final written decision. Such parallel proceedings include district court trials, ITC trials, other IPRs, and PGRs.
- Section 42.108 (g): Institution in extraordinary circumstances. The Office may institute an IPR notwithstanding above sections under some extraordinary circumstances. Extraordinary circumstances include (i) a prior challenge barring institution was initiated in bad faith and (ii) that the prior challenge is rendered irrelevant in view of a substantial change in a statute or precedent of the Supreme Court of the United States. Examples of circumstances that are not extraordinary include: new or additional prior art, new expert testimony, new caselaw (except as provided above) or new legal argument, or a prior challenger's failure to appeal. Frivolous or abusive petition may be sanctioned, including with award of attorneys' fees.
Note that the proposed rule changes are for IPRs only, as there is no equivalent rule proposed for PGR proceedings in 37 C.F.R. § 42.208.
These proposed rules stem from the Office's commentary that, although IPR proceedings have many advantages, they are not appropriate in every circumstance. The Office maintains that even extremely strong patents become unreliable when subject to serial or parallel validity challenges. As an example, the Office asserts that "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." Consequently, the Office believes that multiple challenges to the same patent through IPRs jeopardize the reliability of patent rights and incentives to invest in new technologies.
Additionally, in the Office's view, serial and parallel validity challenges waste judicial resources and add significant expense and delay. The Office notes that approximately 54% of all IPR petitions filed since the passage of the America Invents Act are one of multiple petitions against the same patent, and more than 80% of IPRs have co-pending district court litigation.
As noted above, all public comments on the proposed rules are due by November 17, a deadline the USPTO has stated it does not expect to extend.
Director Squires' Immediate Change to Institution Decision Reviews
Separately, Director John A. Squires announced he is assuming authority over making all IPR and PGR institution decisions. Since the AIA's enactment, this authority has been delegated to the Board, where panels of APJ judges have decided whether to institute AIA trials and, if instituted, the same panel oversaw the trial and adjudicated the merits.
Effective October 20, the Director, in consultation with at least three PTAB judges, will issue IPR and PGR institution decisions, similar to the interim bifurcated discretionary denial process. The decisions will only provide summary notice of institution grant or denial, contrary to the past practice of issuing full opinions on the institution decision considerations. Notices of denial may be based on discretionary considerations, the merits, or other non-discretionary considerations. A more detailed decision may be provided in proceedings presenting novel or important factual or legal issues. When the Director determines a detailed review is appropriate (e.g., for complex claim construction issues, priority analysis, orrea party in interest determination), he may also refer the institution decision to one or more members of the PTAB. Although the decision has now been consolidated in the hands of the Director, the briefing process for discretionary denials remains unchanged from the interim bifurcated review process.
Director Squires highlighted three concerns he stated prompted the change. First, the Director believes that delegating decisions to APJs creates a possibility of a perception of self-incentivization that "performance metrics and workload structures have created the appearance that institution decisions affect docket size, credit, and resource allocation—inviting concern that the Board may be 'filling its own docket,'" (emphasis original) which could undermine public confidence. Second, he commented that the bifurcated review processes were never intended to be permanent and such processes inadvertently produced extraordinarily high institution rates for referred cases. Third, the Director emphasized that Congress expressly charged the Director, not the Board, to make institution determinations and returning this function realigns Office procedures with the statute's clear language and intent.
* Xu Wang is a Law Clerk at Finnegan.
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