On October 16, the USPTO issued a notice of proposed rulemaking, seeking rule changes that impact the availability of inter partes reviews (IPRs). The new rules specify broad categories of situations in which IPRs will not be instituted or maintained, absent narrowly-defined “extraordinary” circumstances.
First, the USPTO would require every IPR petitioner to file a stipulation that the petitioner would not pursue invalidity challenges to a patent in other venues, such as a U.S. district court or the U.S. International Trade Commission (ITC). In such circumstances, the USPTO would not institute an IPR if the petitioner wanted to pursue validity challenges in these other venues. This appears to be a wide-ranging estoppel that would commit the petitioner to never challenging the same patent claims on any prior art-based grounds at any forum in the future.
Second, the USPTO would not institute an IPR when the USPTO or another forum already has adjudicated the patentability or validity of the claims. In other words, IPRs will be denied if the patent claims survived any post-grant validity challenge made by anyone in virtually any forum including any U.S. district court, the ITC, the Federal Circuit, or the PTAB.
Third, IPRs would not be instituted when another proceeding is “more likely than not” to determine the validity of the challenged claims first—before the IPR is concluded. The other proceeding could be at a U.S. district court, the ITC, or the PTAB. This rule would apply even if the IPR petitioner is not the challenger in the other proceeding.
Finally, the proposed rules permit the USPTO to institute an IPR notwithstanding a prior adjudication or expected earlier determination on patentability or validity when “exceptional” circumstances exist. However, the “exceptional” circumstances that might justify an IPR exclude, among other things, new or additional prior art, new expert testimony, and new caselaw or legal argument. The list of examples of what is an “exceptional” circumstance is short and includes where a challenge to an IPR institution was conducted in “bad faith” or that the underlying statute or Supreme Court precedent has changed.
Director Squires also issued a statement on October 17 reporting that he will now make all IPR institution decisions, further changing IPR practice. Consequently, it would appear that Squires would be making all of the above-mentioned determinations.
Taken together, the goal of the new proposed rules seems to be to discourage the filing of IPRs. Squires has repeatedly expressed concern of the very high rates of IPR institution and invalidation.
The deadline to comment on the new rules is November 17, 2025.
