IP Law Daily, PATENT NEWS: USPTO launches new PTAB rulemaking as prior proposal is withdrawn, (Oct 17, 2025)

By George Basharis, J.D.

The USPTO withdrew last year’s proposed rule on discretionary denials and issued a new proposal refocusing inter partes review proceedings on patents not previously litigated, seeking to strengthen reliability and efficiency in post-grant challenges.

The U.S. Patent and Trademark Office October 17, 2025, published two companion notices in the Federal Register: one notice (90 Fed. Reg. 48342, Oct. 17, 2025) withdrawing its April 2024 proposed rule on Patent Trial and Appeal Board practice and another issuing a new notice of proposed rulemaking (90 Fed. Reg. 48335, Oct. 17, 2025) to revise inter partes review (IPR) procedures. Together, the actions reset the agency’s approach to discretionary institution of IPRs following a change in leadership and policy priorities.

The new proposal seeks to focus IPR proceedings on patents that have not been repeatedly tested in court or before the Office, citing fairness, efficiency, and predictability as guiding objectives. The withdrawal formally ends the earlier rulemaking initiated under former Director Kathi Vidal, which would have codified existing PTAB precedent on serial and parallel petitions.

Public comments on the proposed rule are due November 17, 2025. The USPTO stated that it does not anticipate extending the comment period absent extraordinary circumstances.

Shift from prior policy framework. Under the April 2024 notice, the USPTO proposed to formalize the Board’s discretionary-denial practices addressing parallel and serial petitions and petitions relying on the same or substantially the same prior art previously considered by the Office. That rule also contemplated a new briefing process for discretionary-denial arguments and standardized procedures for terminating proceedings under the America Invents Act (AIA) following settlement.

During the 60-day comment period, the USPTO received nearly 4,000 submissions, including 110 unique comments. The Office withdrew the proposal to “evaluate future actions in light of the administration’s current priorities,” while thanking stakeholders for their participation. The withdrawal clears the way for the new rulemaking, which departs from the prior administration’s emphasis on procedural uniformity in discretionary denials and instead aims to limit the number of IPRs challenging the same patents.

Focusing IPRs on first-time challenges. The new proposed rule would amend 37 C.F.R. part 42 to restrict institution of IPRs to cases where the challenged claims have not been previously adjudicated or where prior litigation concluded at an early stage. The USPTO explained that the revisions are intended to protect the reliability of patent rights and preserve investment incentives by curbing serial and duplicative challenges.

According to the notice, approximately 54 percent of all IPR petitions filed since enactment of the AIA have been one of multiple petitions against the same patent. Even when a patent faces a single IPR, it often is simultaneously litigated in district court or at the International Trade Commission (ITC), leading to parallel validity disputes and extended resolution times.

The Office cited the continued prevalence of repetitive petitions, often involving substantially similar prior art, as evidence that existing precedential decisions have not fully addressed the problem. By limiting IPRs to untested patents or cases where prior litigation was dismissed or settled early, the Office seeks to reduce duplicative proceedings and litigation costs.

Proposed stipulation requirement. A key provision, 37 CFR 42.108(d), would require petitioners seeking review to stipulate that they will not pursue validity challenges under 35 U.S.C. § 102 or § 103 in other venues, such as district court or the ITC, while the IPR is pending. Petitioners would need to file the stipulation in each forum where related litigation is active. The USPTO stated that this requirement promotes efficiency by channeling all validity challenges to a single forum and ensuring that IPRs “serve as a complete substitute for at least some phase of the litigation.”

Additional subsections would preclude institution where the challenged claims have already been upheld in prior Office or judicial proceedings or where parallel litigation is likely to reach a validity determination before the PTAB issues its final written decision. Only in “extraordinary circumstances” could the Board institute review despite those restrictions.

Economic and policy rationale. The USPTO emphasized that repeated patentability challenges undermine investor confidence and deter technological development, particularly among small and medium-sized enterprises that depend on patent protection to compete against established firms. The notice cites data showing that most IPRs are filed by large technology companies and that small entities are disproportionately harmed by weakened patent reliability.

By narrowing institution to first-time challenges, the Office expects to lower litigation and transaction costs for both patent owners and petitioners. The rule also aims to conserve PTAB resources and shorten pendency in ex parte appeals, where administrative patent judges must divide time between appeals and IPR proceedings.

The agency further determined that the proposal will not have a significant economic impact on small entities and qualifies as a procedural rule not subject to the Regulatory Flexibility Act. The only new burden, a stipulation requirement, is expected to impose minimal cost while reducing overall litigation expenses.

Balancing discretion and consistency. The notice reiterates Congress’s grant of broad discretion to the USPTO Director to determine when institution of IPRs benefits the patent system. The rule intends to provide clearer standards for exercising that discretion, improving consistency across PTAB panels and reducing uncertainty over how institution decisions will be made.

By narrowing the overlap between IPR and district court proceedings, the Office expects to avoid conflicting outcomes and enhance predictability for stakeholders. The proposed framework also allows limited exceptions for extraordinary circumstances, such as newly discovered evidence of unpatentability unavailable during earlier litigation.

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