All Quiet on the PTAB Front: USPTO Proposes More Major Restrictions to Inter Partes Review Institution

by Dennis Crouch

The USPTO has published a notice of proposed rulemaking (NPRM) that would dramatically restrict access to inter partes review proceedings. Revision to Rules of Practice before the Patent Trial and Appeal Board, 90 Fed. Reg. [TBD] (Oct. 17, 2025).  The proposed amendments to 37 CFR Part 42 would create mandatory bars to IPR institution in three categories:

1. When claims of the challenged patent have previously been found valid in other proceedings;
2. Where parallel litigation involving the patent will likely reach a validity decision first; and
3. Where petitioners refuse to stipulate against raising any anticipation or obviousness challenge against the patent in other venues.

The rules formalize and expand practices that have emerged through both PTAB decisions and recent Director-level denials, converting discretionary factors into more categorical requirements.  Comments are due in a short 30 day window via www.regulations.gov (docket number PTO-P-2025-0025).  Notably, the USPTO simultaneously withdrew a proposed rule on discretionary denial under Former Director Vidal citing changes in administrative priorities.

Meanwhile the Federal Circuit is in the midst of considering a bolus of mandamus petitions arguing that the USPTO's already ramped-up discretionary denial approach has moved past the ultra vires threshold into the realm of actionable shenanigans. Director Vidal (back at Winston) recently filed an amicus brief to the FedCir on behalf of the Public Interest Patent Law Institute (PIPLA) arguing that the Settled Expectations denial doctrine goes too far: "The USPTO's own data reveals that its new 'settled expectations' rule protects the very patents most likely to be invalid."