estoppel – IP Law Watch

USPTO Proposes Rule Changes to Refocus Inter Partes Review Proceedings

Oct 17 2025

The United States Patent and Trademark Office (USPTO) has proposed significant changes to the rules governing Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). These revisions aim to enhance fairness, efficiency, and predictability in patent disputes, while curbing duplicative and costly litigation. Notably, these changes do not apply to Post-Grant Review (proceedings that must be filed within nine months of the patent issue date).

US: Estoppel Attaches Even If Dismissed Without Prejudice

Aug 17 2018

On August 16, 2018, the U.S. Federal Circuit addressed when the inter partes review (IPR) time bar clock begins to tick. See Click-to-Call Tech. LP v. Ingenio, Inc., Slip Op. 2015-1242 (Fed. Cir. Aug. 16, 2018). The en banc Federal Circuit addressed whether the one year estoppel clock begins for a properly served complaint when the complaint is subsequently dismissed without prejudice. The panel found that the § 315(b) time bar applies. The filing of such a complaint, though later voluntarily dismissed, has previously formed the basis for declaratory judgment jurisdiction where the initial defendant later brings a validity challenge. See TransWeb, LLC v. 3M Innovative Props. Co., 812 F.3d 1295, 1300 (Fed. Cir. 2016).

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