The U.S. Patent and Trademark Office (USPTO) has announced proposed rulemaking that could fundamentally reshape the Inter Partes Review (IPR) landscape. The proposal aims to make invalidity a “one-and-done” process, significantly narrowing the circumstances under which an IPR will be instituted. If adopted, these changes will alter strategic considerations for both petitioners and patent owners.
What’s Changing?
Under the proposed rules, the USPTO would deny institution of an IPR if:
- Claims Already Tested and Upheld. A challenged claim has already been tested and found not invalid in litigation, at the Federal Circuit, at the International Trade Commission (ITC), in a prior Patent Trial and Appeal Board (PTAB) proceeding, or via Ex Parte Reexamination.
- Another Forum Will Decide First. A parallel proceeding filed by any party in district court, the ITC, or a previously filed IPR or PGR is likely to reach an invalidity decision before the PTAB’s Final Written Decision issues (which is generally 18 months after the filing of an IPR).
- Petitioner Will Not Commit to One Forum. The petitioner refuses to stipulate that it will not pursue invalidity challenges under Sections 102 or 103 in any other venue if the IPR is instituted.
Why It Matters
For petitioners, this proposal raises the stakes on timing and forum selection. Once a patent has been tested in any substantive forum by any party and the patent is determined not to be invalid, the door to an IPR may close. If another accused infringer has already challenged a patent and lost, then the next accused infringer will be unable to challenge the validity of the patent via an IPR. In addition, the scope of the required stipulation is much broader than that of any statutory estoppel. IPRs are limited to prior art consisting of patents and printed publications; the new regulations require petitioners to relinquish the ability to use other types of prior art in litigation. IPR estoppel is only limited to challenged claims; the new regulations require the petitioner to relinquish the ability to challenge in litigation the validity of previously unchallenged claims of the patent.
For patent owners, the rule promises greater certainty and fewer duplicative challenges, reinforcing the presumption of validity that underpins investment in innovation.
The Missing Piece: Settled Expectations
While the proposed rule sharply limits repeat challenges, it does not address the broader discretionary denial framework that has evolved since April 2025 under the Director Review decisions, including the concept that patent owners have “settled expectations” that their patents will not be challenged after a certain time. The proposed regulations add new hurdles for institution but leave open the possibility that discretionary denials could still occur for other reasons, like settled expectations.
Looking Ahead
If finalized, these changes will likely reduce the number of IPR petitions and shift more validity disputes back to district courts and the ITC. For companies navigating high-stakes patent litigation, the message is clear: plan early, choose your forum wisely, and expect that the USPTO will reject second bites at the invalidity apple.
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