USPTO’s PTAB Rulemaking Signals a Major Shift in IPR Practice
The USPTO appears poised to finalize a significant revision to Patent Trial and Appeal Board (PTAB) practice. A final rule titled Revision to Rules of Practice Before the Patent Trial and Appeal Board (90 FR 48335) is currently undergoing Executive Order 12866 review (RIN: 0651-AD89), indicating that agency review has been completed and the rule is nearing publication.
What the Rule Would Do?
The rule focuses on the PTAB’s institution decisions in inter partes review (IPR) proceedings. According to the USPTO, the goal is to concentrate IPR practice on patents and claims that have not already been extensively challenged in district court litigation, or where prior litigation ended at an early stage. The agency has explained that the proposal is intended to improve fairness, efficiency, and predictability in patent disputes.
In practical terms, the rule would make it more difficult for accused infringers of US patents to pursue an IPR after substantial district court litigation has already occurred, an ITC proceeding has progressed, or other challenges have been made to the claims of a patent. The USPTO expressed concern about duplicative proceedings, inconsistent outcomes between courts and the PTAB, and the strain that IPR proceedings place on PTAB resources.
The Policy Rationale
The USPTO’s proposal reflects a broader policy shift toward strengthening patent reliability and reducing parallel validity challenges. The agency argues that limiting duplicative PTAB proceedings could:
- Increase predictability for patent owners and challengers.
- Reduce the risk of inconsistent outcomes between district courts and the PTAB.
- Lower litigation and licensing transaction costs.
- Allow administrative patent judges to devote more resources to ex parte appeals and other PTAB responsibilities.
The Office specifically noted that ex parte appeals are the preferred administrative avenue for reviewing examiner decisions, whereas patent validity can often be challenged through multiple mechanisms, including district court litigation.
Potential Impact on Patent Litigants
If adopted substantially as proposed, the rule could materially alter IPR strategy. Petitioners may face increased pressure to file IPRs earlier in the lifecycle of a dispute, before district court litigation advances too far. Patent owners, meanwhile, may benefit from greater certainty once litigation reaches an advanced stage.
The proposal also appears likely to reduce the attractiveness of follow-on or serial PTAB challenges and may increase the importance of front-end invalidity analysis when patent disputes first emerge.
What Happens Next?
The rule is currently listed as a pending final rule under EO 12866 review. The proposed rule generated substantial public interest, with thousands of comments submitted during the rulemaking process. Publication of the final rule will reveal whether the USPTO adopts the proposal largely as drafted or makes significant revisions in response to stakeholder feedback.
Key Takeaway
For companies that routinely use IPRs as part of their patent litigation strategy, this rulemaking may represent one of the most consequential PTAB procedural developments in recent years. By refocusing IPR availability on claims not previously litigated, the USPTO is signaling a preference for earlier PTAB challenges and less overlap between district court litigation and administrative review.
By: Jason Engel and Erik Halverson