USPTO's Proposed "One and Done" IPR Rule: Rethinking Finality, Fairness, and Efficiency

"The USPTO's recently published notice of proposed rulemaking (RIN 0651-AD89, Docket No. PTO-P-2025-0025) for inter partes review (IPR) proceedings seeks to curb multiple IPR challenges to the same patent. This aligns with the USPTO's recent and decisive shift toward limiting accessibility of IPRs as a means to challenge patents outside of the district courts. While the USPTO claims to promote "fairness, efficiency, and predictability," the practical impact would be a dramatic change in the risk calculus for accused infringers."

"especially those who never had their own opportunity to mount a proper challenge. Parties would be stuck with the results of someone else's work product, no matter how flawed it was. For purposes of §§ 102/103, the USPTO effectively seeks to move beyond the presumption of validity and create a final determination of validity as far as IPR challenges are concerned."

"Require stipulations from petitioners not to pursue invalidity under §§ 102/103 in other venues if IPR is instituted. (§42.108(d)) Prohibit institution of IPRs against claims that have survived validity challenges in district court, ITC, or prior USPTO proceedings. (§42.108(e)) Prohibit institution if a district court trial or ITC initial or final determination will occur, more likely than not, prior to the final written decision in the instant IPR challenge. (§42.108(f))"

USPTO proposes amendments to 37 CFR §42.108 designed to limit duplicate and successive inter partes review challenges. The amendments would require petitioners to stipulate not to pursue §§ 102/103 invalidity in other venues if an instituted IPR proceeds. Institution would be barred for claims that already survived validity challenges in district court, the ITC, or prior USPTO proceedings, and where a district court or ITC determination is likely to occur before the IPR final written decision. Successive petitions would be disallowed absent extraordinary circumstances, with potential sanctions and fee shifting for frivolous or abusive petitions, shifting estoppel and finality effects.

Read at Intellectual Property Law Blog