USPTO Proposes Rule That Could Impact IPR Challenges

The United States Patent and Trademark Office has issued a notice of proposed rulemaking that could impact inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). Generally, the proposed rule would limit IPR proceedings to patent claims that have not previously been challenged in litigation or where prior litigation was resolved at an early stage. The Office maintains that such action is warranted because duplicative patentability challenges undermine the reliability of patent rights and deter investment in new technologies.  

The rule 

Specifically, the proposed rule would amend 37 CFR Part 42, § 42.108 to add subsections (d)-(g) as follows:  

• § 42.108(d) Required stipulation for efficiency: The Board will not institute or maintain IPR unless the petitioner stipulates that it will not pursue invalidity challenges under §§ 102 or 103 in any other proceeding.  
• § 42.108(e) Claims found valid in other proceedings: The Board will not institute or maintain IPR if the challenged claim (or an independent claim from which a challenged claim depends) has been found not invalid or not unpatentable under §§ 102 or 103 in other forums, including by the Office in ex parte reexamination. 
• § 42.108(f) Parallel litigation: The Board will not institute or maintain IPR if another forum is likely to determine the patentability of the claims under §§ 102 or 103 before the due date of a final written decision. 
• § 42.108(g) Extraordinary circumstances: The Board may institute IPR notwithstanding paragraphs (d), (e), and (f) if the Director finds that extraordinary circumstances warrant institution.  

The Office’s rationale for the proposed rule is that, while IPR proceedings have many advantages, they are not appropriate in every circumstance. The Office states that, when IPR proceedings cover the same ground as district court litigation, they cease to be “alternatives” to such litigation, and serial or parallel IPR proceedings waste resources by relitigating issues the Office is considering, has already considered, or that are being considered elsewhere. The Office also states that multiple challenges to the same patent can also jeopardize the reliability of patent rights and incentives to invest in new technologies, as patents cannot serve their economic function if they are perpetually subject to de novo review.  

According to the Office’s calculations, approximately 54% of all IPR petitions since the passage of the America Invents Act are one of multiple petitions against the same patent, while more than 80% of IPRs are involved in co-pending district court litigation. And despite the Office’s efforts to limit serial and parallel challenges through precedential PTAB decisions, the percentage of petitions filed since 2019 that are one of multiple challenges to the same patent is still above 45%.  

As such, the Office contends that the proposed rule is necessary to quiet title to issued patents.  

What it means 

Mandatory stipulations 

If the proposed rule is adopted, every petitioner — whether currently in litigation or not — must agree not to raise any ground of invalidity under §§ 102 and 103 in any other proceeding, including invalidity arguments based on grounds unavailable in IPR, e.g., invalidity based on an on-sale bar or unpublished system prior art. In effect, filing an IPR petition would mean forfeiting the right to challenge the patent under §§ 102 or 103 elsewhere once the IPR is instituted. The decision for a petitioner that is involved in litigation to file an IPR petition will turn on a willingness to adopt the mandatory stipulation. 

Race to the PTAB or another forum 

The proposed rule may result in a race to the PTAB or another forum that can decide patentability of a patent’s claims. According to the proposed rule, the Board will not institute or maintain an IPR if the challenged claims — or even their parent independent claims — are upheld as valid by a court, the PTAB, the International Trade Commission (ITC), or the Office in an ex parte reexamination. In effect, every IPR that reaches a final written decision would presumptively preclude future proceedings even if the earlier IPR involved a different party.   

Possible retroactive effect 

Proposed subsections (d)-(f) state that no IPR shall be “instituted or maintained.” It is unclear whether the use of the “maintained” language signifies that the proposed rule is intended to have a retroactive effect for IPRs that are pending once the proposed rule goes into effect. Retroactive application may require a petitioner in an already-pending IPR to agree to a more restrictive stipulation to “maintain” the pending IPR and may result in termination if another forum has resolved, or is likely resolve, validity before a final written decision.   

The Fintiv factors 

The Fintiv factors may become obsolete because, under the proposed rule, the PTAB will not institute or maintain an IPR if another proceeding decides patentability or validity before the due date for the final written decision. On the other hand, the proposed stipulation requirement may alleviate some concern over the timing of a parallel proceeding in an IPR involving a patent whose validity has not previously been challenged, since institution is likely to occur before a district court trial or an initial or final determination of the ITC. 

Settled expectations 

A notable omission from the proposed rule package is a rule related to the “settled expectations” factor introduced in the memorandum defining an Interim Processes for PTAB Workload Management, issued March 26, 2025.¹ It remains unclear whether the omission signals an end to discretionary denial based on “settled expectations” or whether the practice will continue without codification in a rule. 

Bifurcation of discretionary denial decisions 

It is unclear how the proposed rule affects the process for bifurcated discretionary denial decisions established in the March 26, 2025, memorandum. In fact, the proposed rule contemplates decision-making by “a panel of the Board” and “the Panel [referring the] matter to the Director,” which may suggest a return to discretionary denial decisions being made by Board panels.   

Extraordinary circumstances 

The scope of “extraordinary circumstances” that warrant institution likely will be debated if the proposed rule is enacted in its current form. The rule provides two examples of extraordinary circumstances that warrant institution: (1) “[T]he prior challenge barring institution was initiated in bad faith, e.g., for the purpose of preventing future challenges,” and (2) “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.” It also provides four examples of circumstances that are not extraordinary: (1) “[N]ew or additional prior art,” (2) “new expert testimony,” (3) “new caselaw (except as provided above) or new legal argument,” or (4) “a prior challenger’s failure to appeal.”  

The Office is seeking comments on the proposed rule, which it must receive by November 17, 2025. For more information about the proposed rule and how it could affect your patent strategy, please contact your Fish attorney.