USPTO Reshapes PTAB Practice with a Double Shot of Announcements
One IPR Rule Withdrawn, Another Proposed
In a significant wake-up call for patent law practitioners and stakeholders, the U.S. Patent and Trademark Office (USPTO) made two major announcements today regarding practice before the Patent Trial and Appeal Board (PTAB). In a surprising turn, the Office withdrew a detailed rulemaking package proposed in April 2024 that addressed discretionary denials of America Invents Act (AIA) reviews. Moments later, it announced a new Notice of Proposed Rulemaking (NPRM) aimed squarely at limiting repeated inter partes review (IPR) challenges against the same patent.
This “one-two punch” signals a clear policy direction from the USPTO. The Office has voiced concern that “even extremely strong patents become unreliable when subject to serial or parallel challenges” (2025-19580, p. 3). For patent owners and challengers, these actions will fundamentally alter the strategy surrounding patent validity disputes.
Clearing the Decks: Withdrawal of the April 2024 Proposed Rules
First, the USPTO announced the withdrawal of its April 19, 2024, NPRM. That proposal was an ambitious attempt to codify and build upon years of PTAB precedent concerning the Director’s discretion to institute IPR and post-grant review (PGR) proceedings.
A key focus of the proposal was to “enhance and build on existing precedent and guidance” regarding serial petitions, parallel petitions, and arguments previously presented to the Office (2024-08362, p. 2). The now-withdrawn rules also covered a separate briefing process for these issues and procedures for terminating proceedings after a settlement (2024-08362, p. 1).
The proposal generated immense interest from the IP community, drawing “more than 3,900 submissions from a variety of stakeholders” during its 60-day comment period (2025-19587, p. 2).
In its official notice, the USPTO stated it is “withdrawing the rulemaking at this time to evaluate future actions in light of the administration’s current priorities” (2025-19587, p. 2). By withdrawing the old proposal, the USPTO has cleared the way for a more focused and arguably more aggressive new rule.
A New Sheriff in Town: Proposed Rules to Limit Repeat Patent Challenges
The main event of the day was the release of a new, different NPRM focused on IPRs. This intent of the new rule is said to “promote fairness, efficiency, and predictability in patent disputes” by targeting the problem of serial and parallel patent challenges (2025-19580, p. 2).
The Office proposes that the current system undermines the economic function of patents. To illustrate the point, the USPTO presents a striking hypothetical: “a patent with a 70% chance of surviving one de novo patentability review has less than a 50% chance of withstanding two or more de novo patentability challenges” (2025-19580, p. 4).
This perpetual uncertainty, the Office claims, limits “the ability of inventors to attract capital investment and further develop their innovation and bring it to the marketplace” (2025-19580, p. 4).
To address this, the proposed rule introduces several potent changes to 37 CFR 42:
Forced Forum Selection via Stipulation: The most impactful change is a new requirement under § 42.108(d). An IPR “shall not be instituted or maintained unless each petitioner files a stipulation...stating that if a trial is instituted, the petitioner...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” (2025-19580, p. 22). The Office’s view is that this ensures IPRs “should generally serve as a complete substitute for at least some phase of the litigation” (2025-19580, p. 12).
Bar on IPRs After Prior Adjudication: The proposed § 42.108(e) would bar the institution of an IPR if a challenged claim or its independent parent claim has already survived a validity challenge. A prior favorable finding from a district court trial, a district court summary judgment, an ITC determination, a prior PTAB final written decision, or a third-party requested ex parte reexamination would preclude a new IPR (2025-19580, pp. 22-23).
Preclusion Based on a Faster Parallel Proceeding: Under the proposed § 42.108(f), the PTAB will not institute an IPR if a parallel proceeding in district court, the ITC, or another PTAB trial is “more likely than not” to occur “before the due date for the final written decision” in the IPR (2025-19580, p. 23).
A Narrow “Extraordinary Circumstances” Exception: The rule provides a slim escape hatch in § 42.108(g). The USPTO Director may personally institute an IPR if “extraordinary circumstances” exist, such as a prior challenge initiated in bad faith or a substantial change in law from a statute or Supreme Court precedent (2025-19580, pp. 23-24). Critically, the rule clarifies that extraordinary circumstances “shall not include new or additional prior art, new expert testimony, new caselaw...or new legal argument” (2025-19580, p. 24).
From Codification to Preclusion: Comparing the 2024 and 2025 Proposals
The shift from the withdrawn April 2024 NPRM to the new October 2025 proposal represents a significant change in philosophy and approach. While both aimed to govern discretionary denials, their methods and goals are starkly different.
The 2024 proposal was fundamentally about codification and clarification. Its intent was to take the existing, case law-driven standards from PTAB precedential decisions and formalize them into rules. For example, it proposed adopting the multi-factor tests from cases like General Plastic for serial petitions, which allowed the Board to “consider the following factors in determining whether to deny institution” (2024-08362, p. 12). This approach preserved the Board’s flexibility and focused on procedural improvements, such as a separate briefing process for discretionary issues.
In contrast, the 2025 proposal is about preclusion and finality. It moves away from flexible, multi-factor tests and toward rigid, bright-line rules. The language shifts from the discretionary “may deny” to the mandatory “shall not be instituted” (2025-19580, p. 22).
Where the 2024 rule sought to organize and streamline the Board’s existing discretionary analysis, the 2025 rule seeks to remove that discretion in many instances, creating automatic bars to institution based on a patent’s litigation history and a petitioner’s willingness to make a binding forum-selection stipulation.
The new rule’s core purpose is not just to manage the PTAB’s docket, but to actively protect patents from what the Office sees as destabilizing, repetitive challenges.
The Future of Discretionary Denials and Timeline for Implementation
A key question arising from these announcements is whether discretionary denials are going away. The answer is no; in fact, they are set to become more rigid. The new proposed rule does not eliminate the Director’s discretion but instead exercises it by establishing a set of bright-line rules that would lead to mandatory denials in specific circumstances.
The proposed text repeatedly states that an IPR “shall not be instituted” if certain conditions are met, shifting away from multi-factor balancing tests toward a more prescriptive framework (2025-19580, p. 22).
As for the timeline, it is important to remember this is a Notice of Proposed Rulemaking, not a final, implemented rule. The process is just beginning. The USPTO has set a deadline for public input, stating that “Comments must be received by November 17, 2025, to ensure consideration.”
After this comment period closes, the Office will review the feedback and decide whether to issue a final rule, which could be modified from the current proposal. This process typically takes several months, meaning a final rule is unlikely to be implemented until sometime in 2026 at the earliest.
Analysis: Benefits, Challenges, and Risks
The USPTO’s proposed framework is a bold step toward rebalancing the scales between patent challengers and owners. Its success will depend on whether the perceived benefits outweigh the potential risks.
From the USPTO’s and patent holders’ perspectives, the benefits are clear. The primary goal is to bolster the reliability of patent rights, which the Office argues will “further innovation and economic growth” (2025-19580, p. 9). By creating what Congress called “quiet title to patent owners to ensure continued investment resources,” the rule is intended to provide stability (2025-19580, p. 4).
The USPTO also believes the rule will support small and medium-sized businesses, who can be harmed by weakened patent rights that allow “market incumbents to copy the innovations of smaller rivals” (2025-19580, p. 10).
Another key benefit is efficiency. The rule is expected to reduce overall litigation costs by foreclosing “most IPR challenges where patent validity has already been tested” (2025-19580, p. 9). This would also free up the PTAB’s resources, allowing its Administrative Patent Judges (APJs) to focus on their “essential ex parte appeal mission,” which has reportedly seen pendency “well-above the Office’s pendency goals” for several years (2025-19580, p. 11).
For patent challengers, the proposed rule presents a daunting new reality. The mandatory stipulation creates a high-stakes, “one bite at the apple” scenario. A petitioner must now abandon its right to argue invalidity under §§ 102 and 103 in district court as a condition of filing an IPR. This goes far beyond the existing estoppel provisions of the AIA.
The extremely narrow “extraordinary circumstances” exception may also raise concerns. By explicitly excluding the discovery of “new or additional prior art” or “new legal argument,” the rule prioritizes finality over seemingly all else (2025-19580, p. 24). A defendant who discovers a dispositive piece of prior art after an IPR has been decided against them may have no recourse at the PTAB, potentially leaving a truly invalid patent enforceable.
Furthermore, the new rules could create perverse incentives. A patent owner who survives a single challenge—even a poorly argued one—gains a formidable shield against future IPRs. The rule attempts to guard against challenges “initiated in bad faith, e.g., for the purpose of preventing future challenges,” but proving bad faith is notoriously difficult (2025-19580, p. 23).
Conclusion
Today’s announcements represent one of the most significant proposed shifts in PTAB practice since the AIA’s inception. By withdrawing the broad April 2024 proposal and advancing this new, targeted rule, the USPTO is making a strong statement in favor of patent certainty and finality.
The proposed changes would transform the IPR from a popular parallel litigation tool into a true, all-or-nothing alternative to district court validity challenges.
The strategic calculus for both patent enforcement and defense is on the verge of a major overhaul. The Office invites “comments from the public on whether this proposed rule strikes the appropriate balance between efficiency, fairness, and stability in the patent system” (2025-19580, p. 11).
Patent attorneys, in-house counsel, and inventors should review this NPRM carefully, as the upcoming comment period provides a critical opportunity to weigh in on a rule that will shape the contours of patent litigation for years to come. Stay tuned.
Disclaimer: This is provided for informational purposes only and does not constitute legal or financial advice. To the extent there are any opinions in this article, they are the author’s alone and do not represent the beliefs of his firm or clients. The strategies expressed are purely speculation based on publicly available information. The information expressed is subject to change at any time and should be checked for completeness, accuracy and current applicability. For advice, consult a suitably licensed attorney and/or patent professional.