"The proposed amendments to 37 CFR Part 42 would create mandatory bars to IPR institution in three categories: When claims of the challenged patent have previously been found valid in other proceedings; Where parallel litigation involving the patent will likely reach a validity decision first; and Where petitioners refuse to stipulate against raising any anticipation or obviousness challenge against the patent in other venues."
"The rules formalize and expand practices that have emerged through both PTAB decisions and recent Director-level denials, converting discretionary factors into more categorical requirements. Comments are due in a short 30 day window via www.regulations.gov (docket number PTO-P-2025-0025). Notably, the USPTO simultaneously withdrew a proposed rule on discretionary denial under Former Director Vidal citing changes in administrative priorities."
"Director Vidal (back at Winston) recently filed an amicus brief to the FedCir on behalf of the Public Interest Patent Law Institute (PIPLA) arguing that the Settled Expectations denial doctrine goes too far: "The USPTO's own data reveals that its new 'settled expectations' rule protects the very patents most likely to be invalid.""
The USPTO published a notice of proposed rulemaking to revise 37 CFR Part 42 and restrict access to inter partes review (IPR) proceedings. The proposed amendments would create mandatory bars to IPR institution when claims were previously found valid in other proceedings, when parallel litigation will likely reach a validity decision first, and when petitioners refuse to stipulate against raising anticipation or obviousness challenges elsewhere. The rules codify and expand existing PTAB and Director-level discretionary practices into categorical requirements. The notice sets a 30-day comment window on www.regulations.gov (docket PTO-P-2025-0025). The Federal Circuit faces mandamus petitions challenging heightened discretionary denials.
Read at Patently-O
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