by Dennis Crouch
The USPTO has extended the deadline for public comments on its proposed rulemaking that would dramatically restrict access to inter partes review (IPR) proceedings. The comment period, originally set to close on November 17, 2025, has been extended by 15 days to December 2, 2025, following requests from a coalition of industry organizations who argued that 30 days was insufficient time to analyze the extensive proposed changes to PTAB practice.
- Original NPRM (Oct. 17, 2025): Revision to Rules of Practice Before the PTAB; docket PTO-P-2025-0025. (Federal Register)
- Extension of comment deadline (Nov. 7, 2025): Federal Register notice extending the comment period to December 2, 2025 (15-day extension), with PDF. (Federal Register)
- Patently-O analysis (Oct. 16, 2025): All Quiet on the PTAB Front: USPTO Proposes More Restrictions on IPR Institution. (patentlyo.com)
The proposed amendments would create three categories of mandatory bars to IPR institution: when claims have previously been found valid in other proceedings, where parallel litigation will likely reach a validity decision first, and where petitioners refuse to stipulate against raising any anticipation or obviousness challenges in other venues. These changes are part of an overall dramatic shift against IPR institution under President Trump’s patent office leadership that began with Dir. Stewart and continues with Dir. Squires. But, the proposed rules do not include some of the most dramatic changes, including the “settled expectations” standard and the new process of issuing IPR institution rulings without any accompanying explanation.
The Proposed Rules and What They Leave Out
The notice of proposed rulemaking would codify categorical restrictions on IPR institution through amendments to 37 C.F.R. § 42.108. Under proposed § 42.108(d), IPR would not be instituted unless each petitioner files a stipulation agreeing that the petitioner and any real party in interest or privy “will not raise grounds of invalidity or unpatentability with respect to the challenged patent under 35 U.S.C. 102 or 103 in any other proceeding.” This extends well beyond the statutory estoppel provisions in 35 U.S.C. § 315(e), which apply only after a final written decision and bar only grounds that were raised or reasonably could have been raised. The proposed stipulation requirement would apply upfront, cover all claims in the patent (not just those challenged in the IPR), and extend to entirely different grounds that could not have been presented in the IPR.
Proposed § 42.108(e) would bar institution if a challenged claim or the independent claim from which it depends was previously found valid or not invalid under §§ 102 or 103 in various categories of proceedings: district court trials or summary judgment, ITC determinations, PTAB final written decisions, and third-party-requested ex parte reexaminations. The rule draws no distinction based on whether the prior proceeding involved the same parties, the same prior art, or the same arguments. A district court finding that independent claim 1 survives summary judgment on one ground would bar any future IPR challenging dependent claim 2 on entirely different art, even by a different petitioner who had no involvement in the earlier litigation.
Proposed § 42.108(f) formalizes the Fintiv framework as a mandatory bar, requiring denial if it is “more likely than not” that a parallel district court trial, ITC determination, or other PTAB final written decision will resolve §§ 102/103 issues before the IPR concludes. The rule provides no guidance on how panels should assess trial schedules that frequently change, or what happens if circumstances shift after institution. The language states IPR “shall not be instituted or maintained,” suggesting ongoing evaluation and multiple opportunities to deny institution, but the mechanics remain unclear.
The proposed rule includes a narrow extraordinary circumstances exception in § 42.108(g), but this requires Director-level institution after panel referral. The regulation explicitly excludes common scenarios from qualifying: “new or additional prior art, new expert testimony, new caselaw (except as provided above) or new legal argument, or a prior challenger’s failure to appeal.” This means discovering better prior art after a claim survived an earlier challenge will not justify a second IPR. The exception also warns that frivolous petitions “may be appropriately sanctioned, including with an award of attorneys’ fees.”
What the proposed rules do not address: In 2025, the USPTO has expanded discretionary denials through doctrines not mentioned in the proposed rulemaking. The “settled expectations” approach, which denies institution when a patent was issued >6 years ago, operates entirely outside the formal rule structure. Former Director Vidal recently filed an amicus brief in pending Federal Circuit mandamus proceedings arguing that the settled expectations doctrine protects “the very patents most likely to be invalid.”
But for me, the largest change of all not mentioned in the proposal is the Director’s new standard practice of summary institution denials without any express reasoning. Under Director Squires, the USPTO has begun regularly issuing no-opinion denials that cite only the Director’s discretion under 35 U.S.C. § 314(a), providing no explanation of the basis for denial and no opportunity for meaningful review. These unreasoned denials operate alongside the formal rule proposals. This seems to potentially create a two-track system where some denials rest on articulated (if controversial) categorical rules while others rest on unexplained Director fiat. But, neither will receive articulated opinions and thus the actual reasons for decision will remain unclear.
The USPTO grounds its rulemaking authority in 35 U.S.C. §§ 314(a) and 316(a)(4). Section 314(a) provides that the Director “may not authorize an inter partes review” unless certain statutory thresholds are met. This language suggest some discretion and in Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020), the Supreme Court held that institution decisions are committed to Director discretion and are not appealable. Section 316(a)(4) instructs the Director to provide regulations “governing . . . the relationship of [inter partes] review to other proceedings under this title.”
Divided Response: Inventors vs. Industry
Over 1,000 comments have already been submitted. But, the bulk of these have been deemed ‘repetitive’ — with the GSA fitting all of them into 33 unique comments. So far, the bulk of these have come from independent inventors, small entity practitioners, and patent monetization firms who have rallied strongly in support of the proposals. These groups have generally been harmed by the IPR process that has cancelled tens of thousands of asserted patent claims. Technology companies and industry coalitions have taken the other side – highlighting their concerns about limiting patent challenges. For the most part, the larger players have not yet filed their comments that will now be due in early December 2025.
The divide reflects competing narratives about the IPR system. Patent owners and their advocates describe a regime that enables harassment through duplicative challenges and undermines investment in innovation by creating uncertainty about patent validity. Frequent IPR users and their advocates describe a system crucial for weeding out bad patents that would otherwise slow down their business practices.
Several commenters focused on procedural and legal issues rather than taking policy positions. The Citizens Rulemaking Alliance submitted a detailed petition questioning whether the USPTO properly characterized the rule as procedural, arguing that provisions “impose binding new obligations” and “substantially affect the rights of interested parties.” This is important because procedural changes would be exempt from notice-and-comment requirements and are more difficult to challenge as ultra vires.
In my view, the proposed rules raise substantial questions about the scope of the USPTO’s statutory authority under §§ 314(a). The statutory provision states that the Director “may not authorize an inter partes review” unless certain conditions are met. This negative framing gives the Director authority to decline institution, but it does not explicitly authorize categorical rules that exclude entire classes of petitions regardless of their substantive merit. And, the discretion recognized in Thryv concerned case-by-case determinations, not binding regulations that transform discretionary factors into mandatory bars. There is a meaningful difference between the Director exercising judgment about whether to institute a particular IPR and the Director promulgating rules that categorically bar institution based on circumstances far removed from the quality of the current petition or the validity of the challenged claims.
The more specific grant of rulemaking authority appears in § 316(a)(4), which directs the Director to prescribe regulations “governing . . . the relationship of [inter partes] review to other proceedings under this title.” The statute specifies that Title 35 encompasses both USPTO proceedings and district court actions. The proposed rules invoke this provision as authority to regulate interaction between IPRs and parallel litigation. But § 316(a)(4) speaks to “the relationship” between IPR and other proceedings, suggesting coordination and management of concurrent or overlapping matters. It is less clear that this provision authorizes categorical bars based on proceedings that occurred years earlier with different parties raising different grounds; or that it authorizes a no-future-challenge stipulation requirement.
Administrative Procedure Act Review of Agency Rules The Administrative Procedure Act (APA), 5 U.S.C. §§ 551-559, governs federal agency rulemaking and provides for judicial review of final agency action. Under 5 U.S.C. § 706(2)(C), a reviewing court shall set aside agency action found to be "in excess of statutory jurisdiction, authority, or limitations, or short of statutory right." Even when an agency has been granted discretion, that discretion must operate within statutory bounds. Rules that exceed the scope of the agency's statutory mandate can be challenged as ultra vires. The fact that the Supreme Court held IPR institution decisions unreviewable in Thryv does not mean that formal regulations governing institution are similarly immune from judicial review. Regulations that categorically restrict access to IPR can be challenged in court on the ground that they exceed the USPTO's statutory authority.
Despite these concerns about statutory authority and the substantive overreach of the proposed rules, there is a paradoxical argument for why finalizing these rules could benefit the long-term governance of the IPR system. By codifying these policies in formal regulations, the USPTO would open itself to APA review. Courts can evaluate whether the rules exceed statutory authority, whether the agency adequately considered alternatives and costs, and whether the agency’s reasoning is arbitrary and capricious. Even if the rules are ultimately upheld in some form, the rulemaking process forces transparency and public justification.