USPTO Proposes Revisions to Patent Trial and Appeal Board Practices
Published Date: 10/17/2025
Proposed Rule
Summary
The USPTO wants to change the rules for how patent challenges happen before the Patent Trial and Appeal Board. These updates affect inventors, companies, and lawyers by making the review process clearer and possibly faster. If you want to share your thoughts, you need to comment by November 17, 2025—so don’t wait!
Analyzed Economic Effects
6 provisions identified: 4 benefits, 2 costs, 0 mixed.
IPR Barred If Claims Were Already Found Valid
The PTAB would not institute or maintain an IPR for a challenged claim (or an independent claim from which it depends) if that claim was already found not invalid under 35 U.S.C. 102 or 103 by (1) a district court trial or jury verdict, (2) district court summary judgment, (3) the U.S. International Trade Commission, (4) a PTAB final written decision, (5) ex parte reexamination office action/Board decision, or (6) where the Federal Circuit reversed a finding of unpatentability or invalidity.
Must Promise Not To Re-raise Key Grounds
If you file an inter partes review (IPR) petition, the Board will not start or keep the IPR unless you file a written stipulation saying that, if a trial is instituted, you and any real party in interest will not raise invalidity or unpatentability grounds under 35 U.S.C. 102 or 103 in any other proceeding. That stipulation must be filed with the PTAB and any other tribunal where you are litigating regarding the challenged patent.
No IPR When Parallel Case Likely Decides First
The USPTO would not institute or maintain an IPR if, more likely than not, a parallel district court trial, an ITC initial/final determination, or a PTAB final written decision will occur with respect to the challenged claim before the PTAB's final written decision is due under 35 U.S.C. 316(a)(11).
Rule Aimed To Reduce Litigation Costs For Small Firms
The USPTO states the proposed rule focuses IPRs on patents not previously litigated or resolved early and estimates this will reduce litigation costs and transaction costs for patent licensing, likely benefiting a greater percentage of small entities. The Office certified the rule would not have a significant economic impact on a substantial number of small entities.
More PTAB Time For Ex Parte Appeals
The USPTO says limiting some IPRs will free administrative patent judge (APJ) time to handle ex parte appeals from examination, which the Office says should reduce ex parte appeal pendency and speed decisions on whether patent application claims should issue.
Paperwork Time Up 1 Hour Per Petition
The USPTO estimates each IPR petition will need one extra hour (from 120 to 121 hours) to prepare and submit the new stipulation. At 1,300 petitions per year, the Office estimates an added 1,300 annual respondent burden hours and an increase of $581,100 in hourly cost burden (using $447/hour).
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Key Dates
Department and Agencies
Related Federal Register Documents
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Next: 2025-19587, Patent Trial and Appeal Board Rules of Practice for Briefing Discretionary Denial Issues, and Rules for 325(d) Considerations, Instituting Parallel and Serial Petitions, and Termination Due to Settlement Agreement
The USPTO is pulling back a proposed rule that would have changed how patent challenges are handled by the Patent Trial and Appeal Board. This affects inventors, companies, and lawyers who deal with patent reviews, as the changes around multiple petitions and settlements won’t happen now. No new fees or deadlines are coming from this, but stay tuned for future updates!