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On October 17, 2025, the United States Patent and Trademark Office (USPTO) published a notice of proposed rulemaking (NPRM) that, if accepted, would dramatically change the criteria for Inter Partes Review (IPR) institution before the Patent Trial and Appeal Board (PTAB). The NPRM proposes several new rules that would restrict the institution of IPR's in many instances. Comments on the proposed rules must be submitted by November 17, 2025. Separately, but on the same day, the USPTO Director, John A. Squires, announced that he would assume authority over making all IPR and Post-Grant Review (PGR) institution decisions, an authority that has been delegated to the PTAB since the inception of IPRs.
An IPR is a proceeding conducted before the PTAB used to challenge the validity of an issued patent. To initiate an IPR proceeding, the party challenging the patent must petition the Board to review the patentability of one or more of the claims on the grounds of anticipation (35 U.S.C. § 102) and/or obviousness (35 U.S.C. § 103). The petitioner must also show "that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable." If that burden is met, an IPR trial may be instituted. Based on arguments and evidence presented by the petitioner and the patent owner, the Board will make a final decision, within 12 months, whether the petitioner's challenge is successful, in whole or in part. Appeals to the U.S. Court of Appeals for the Federal Circuit may follow. Since IPR procedures were enacted in 2012 as part of the America Invents Act (AIA), it has been a lower cost alternative to challenge the validity of a patent, as compared to traditional district court litigation. The newly proposed rule changes to IPRs would likely deter patent challengers from pursuing IPRs.
The USPTO has framed the NPRM as being intended to "promote fairness, efficiency and predictability in patent disputes." The goal of the changes is to reduce serial and parallel patent validity challenges, allegedly encouraging a strong patent system. The proposed changes to 37 CFR Section 42 are as follows:
Section 42.108 (d): Required stipulation for efficiency. The Office will not institute an IPR when a petitioner intends to pursue invalidity challenges under §§ 102 or 103 in other venues, such as district court or the U.S. International Trade Commission. This proposed section would further require the Petitioner to file the stipulation in any other venue where it is litigating with the patent owner.
Section 42.108 (e): Claims found valid in prior proceedings. The Office will not institute or maintain an IPR if a challenged claim was found not invalid in another proceeding including district court trials and summary judgment decisions, International Trade Commission (ITC) trials, other IPRs, post-grant reviews (PGRs), ex parte reexaminations, and Federal Circuit appeals.
Section 42.108 (f): Parallel Litigation. The Office will not institute an IPR in which "a parallel proceeding is likely to reach a decision regarding the validity of the patent under §§ 102 or 103 before the final written decision."
Section 42.108 (g): Institution in extraordinary circumstances. This proposed rule allows for the Director to personally institute IPRs under circumstances they consider to be extraordinary, notwithstanding previous proposed rules (d), (e), or (f).
As will be appreciated by those who have participated in the IPR process previously, these proposed rules dramatically limit the instances in which an IPR can be instituted. For example, proposed section (d) would not allow institution of an IPR if there is even an intention to pursue a proceeding in another venue like a district court. Among other concerns with this proposed rule is the fact that the U.S. Congress has already considered this issue and has enacted the IPR estoppel provisions in the AIA, 35 U.S.C. § 315(e). The USPTO does not have any authority to change the statute.
Similarly, per proposed rule (e), if a claim has been found valid in a prior proceeding, an IPR may not be instituted. As such, patent challengers would not have the option to pursue an IPR if they are pursuing nearly any other litigation. Furthermore, proposed section (f) now essentially creates a race to reach a decision in another venue so that an IPR may not be instituted. This now forces procedural strategy decisions (e.g., the venue in which to pursue challenges and when to schedule them) to hold as much if not more importance than the actual substance of the patent challenges. The rules also potentially create an incentive for patent holders to file ex parte re-examinations against their own patents to insulate the patent from any future IPR challenges.
Finally, while announced separately from the NPRM, USPTO Director, John A. Squires, announced that he would be revoking the PTAB's discretion to determine which IPRs and PGRs would be instituted. Since the AIA, the Director has delegated IPR and PGR institution decisions to the PTAB. While the Director technically has the authority to authorize IPR and PGR institutions, the Director has never directly exercised this authority until now. It appears as though Director Squires intends to personally handle all IPR and PGR institution decisions going forward. It has also been announced that such decisions will be brief "go / no-go" decisions with little, if any, substantive analysis of the positions of the parties.
Should the proposed rules be implemented for IPR institution,
consideration of whether to prepare and file expensive IPR
petitions will be necessary. IPRs have been an extremely powerful
tool to challenge granted patents; however, the new rules could
make it difficult to recommend IPR as a prudent course of action in
many situations where IPR has made good practical sense for the
past 13 years.
Comments may be submitted to the USPTO until November 17, 2025, via
the Federal eRulemaking Portal at https://www.regulations.gov using the docket
number PTO-P-2025-0025.
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.
