IP Law Daily, VITAL BRIEFING—Rebuffed patent challengers ask Federal Circuit to set aside USPTO’s ‘settled expectations’ rule, (Nov 12, 2025)
Mandamus petitions assert that rule has no basis in law and would upend the administrative patent review system set up by Congress in the America Invents Act. A new Vital Briefing article looks at the dispute.
A relatively new practice of routinely denying institution of inter partes reviews of “older” patents is among the noteworthy marks made by the second Trump Administration on the administrative patent review system established by the America Invents Act. Under the new policy, patent owners are deemed to have developed “settled expectations” regarding the validity of patents that have reached an indeterminate age without being challenged—often six years, but sometimes fewer. USPTO Director John Squires recently began issuing inter partes review (IPR) institution denials in summary format, with no explanation of reasoning, but prior to that, several IPRs were explicitly denied at least in significant part as a result of this “settled expectations” rule.
The new rule has been decried by some in the patent community as unconstitutional, contrary to statutory law, and harmful to innovation. A new Vital Briefing article examines a tactic being pursed by some opponents to the rule—petitions for writ of mandamus filed with the U.S. Court of Appeals for the Federal Circuit, asking for the rule to be set aside. Although the Federal Circuit has already denied mandamus relief to some parties challenging other policy changes regarding IPRs, there is a chance that the court may find these requests more compelling.
The article, titled “USPTO’s new ‘settled expectations’ rule in patent validity challenges called unlawful, ‘irrational,’” is available here.
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