New PTAB Notice of Proposed Rulemaking

The USPTO published a new Notice of Proposed Rulemaking in the Federal Register today. It proposes new rules that would govern the Board’s institution of IPRs. The proposed rules would largely require the Board to do what the Deputy Director is currently doing in the interim discretionary process, although it appears in many ways to go beyond the current approach:

1. Strong Stipulations Required – Petitioners must stipulate not to raise any challenges under 102 and 103, for all prior art (including system art), “in any other proceeding” (which would include ex parte reexamination), if an IPR is instituted.
2. One-and-Done – Any district court trial (bench or jury) decision/verdict of no invalidity, summary judgment of no invalidity, ITC initial determination or final determination of no invalidity, or PTAB final written decision of patentability would bar an IPR challenging the same claim (or an independent claim, but not a dependent claim, from which the claim depends), unless that decision is vacated or reversed in relevant part. The same would be true for an office action or PTAB decision in an ex parte reexamination requested by someone other than the patent owner (or its real party-in-interest or privy) finding patentability (without the appeal caveat because it cannot be appealed). The same would also be true for a Federal Circuit (but not Supreme Court) decision reversing (but not vacating) in relevant part an invalidity/unpatentability determination.
3. First-to-Finish – An IPR could not be instituted or maintained if it is more likely than not that a district court trial, ITC initial determination or final determination, or PTAB final written decision will issue before the due date for the final written decision in the IPR at issue.
4. Exception for Extraordinary Circumstances – The Board could refer an IPR to the Director if it determines that “extraordinary circumstances warrant institution,” e.g., where there was a bad faith prior challenge or a change in the law by Congress or the Supreme Court (but not the Federal Circuit).

Comments on the proposed rules are due November 17, 2025, and the Office indicates that it does not expect to grant an extension to that due date.

If you have any questions concerning the material discussed in this client alert, please contact the following members of our Patent and ITC Litigation practice:

.