Revision to Rules of Practice Before the Patent Trial and Appeal Board

DEPARTMENT OF COMMERCE <SUBAGY>Patent and Trademark Office</SUBAGY> <CFR>37 CFR Part 42</CFR> <DEPDOC>[Docket No. PTO-P-2025-0025]</DEPDOC> <RIN>RIN 0651-AD89</RIN> <SUBJECT>Revision to Rules of Practice Before the Patent Trial and Appeal Board</SUBJECT> <HD SOURCE="HED">AGENCY:</HD> United States Patent and Trademark Office, Department of Commerce. <HD SOURCE="HED">ACTION:</HD> Notice of proposed rulemaking. <SUM> <HD SOURCE="HED">SUMMARY:</HD> The United States Patent and Trademark Office (USPTO or Office) proposes modifications to the rules of practice for inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB or Board) that the Under Secretary of Commerce for Intellectual Property and Director of USPTO and, by delegation, the PTAB will use in instituting IPR. </SUM> <EFFDATE> <HD SOURCE="HED">DATES:</HD> Comments must be received by November 17, 2025 to ensure consideration. The Office does not anticipate granting an extension to the comment period, absent extraordinary circumstances. </EFFDATE> <HD SOURCE="HED">ADDRESSES:</HD> For reasons of Government efficiency, comments must be submitted through the Federal eRulemaking Portal at: <E T="03">https://www.regulations.gov.</E> To submit comments via the portal, one should enter docket number PTO-P-2025-0025 on the homepage and select the “Search” button. The site will provide search results listing all documents associated with this docket. Commenters can find a reference to this notice and select the “Comment” button, complete the required fields, and enter or attach their comments. Attachments to electronic comments will be accepted in Adobe® portable document format (PDF) or Microsoft Word® format. Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments. Visit the Federal eRulemaking Portal for additional instructions on providing comments via the portal. If electronic submission of, or access to, comments is not feasible due to a lack of access to a computer and/or the internet, please contact the USPTO using the contact information below for special instructions. <FURINF> <HD SOURCE="HED">FOR FURTHER INFORMATION CONTACT:</HD> Sharon Israel, Vice Chief Administrative Patent Judge, PTAB at 571-272-9797. </FURINF> <SUPLINF> <HD SOURCE="HED">SUPPLEMENTARY INFORMATION:</HD> <HD SOURCE="HD1">Introduction</HD> The Office is proposing new rules of practice before the PTAB to focus <E T="03">inter partes</E> review proceedings on patent claims that have not previously been challenged in litigation or where prior litigation was resolved at an early stage. This proposed rule is intended to promote fairness, efficiency, and predictability in patent disputes. <HD SOURCE="HD1">Background</HD> The USPTO is charged with promoting innovation through the issuance of patents for new and useful inventions. U.S. Const., art. I, section 8. Invention and the issuance of a patent represent just the beginning of the economic cycle of innovation. After an invention is conceived and patented, substantial investment is necessary to bring a product or service to market. Without this additional investment, the invention may remain in the laboratory, never reaching the public as a commercial product or service. Reliable patent rights encourage the inventor or others to invest in the patented technology by giving them confidence that they, not competitors, will reap the benefits of their efforts. However, every party accused of infringing a patent receives a full opportunity to challenge the validity of the patent in district court. If investors lack confidence that a patent will be found valid when it is enforced, the patent will not give them the assurances they need to invest. District court litigation is not the only forum for challenging patent validity. In 2011, Congress passed the America Invents Act (AIA) to “provid[e] a quick and cost-effective alternative[ ]” to district court patent litigation, most notably through <E T="03">inter partes</E> review (IPR) proceedings. H.R. Rep. No. 112-98, at 48 (2011). IPR proceedings have many advantages, but are not appropriate in every circumstance. When IPR proceedings cover the same ground as district court litigation, they cease to be an “alternative” and can substantially increase litigation costs. That is the opposite of what Congress intended. Serial or parallel IPR proceedings can also be wasteful, because they consume Office and party resources re-litigating issues that the Office is considering, has already considered, or that are being litigated elsewhere, such as in district court or at the U.S. International Trade Commission (ITC). Finally, multiple challenges to the same patent through IPRs jeopardize the reliability of patent rights and incentives to invest in new technologies. This proposed rule is intended to focus IPR proceedings on the most appropriate disputes. <E T="03">Even extremely strong patents become unreliable when subject to serial or parallel validity challenges.</E> Determining whether a patent claim meets the statutory requirements of patentability is frequently a matter of judgment about which reasonable minds may disagree. For example, new technologies are often complex. Both the prior art and claim language may be open to multiple interpretations. The possibility of hindsight bias is also an ever-present difficulty. Because reasonable minds may, and frequently do, disagree about whether a particular patent claim meets the statutory requirements, patents cannot serve their economic function if they are perpetually subject to <E T="03">de novo</E> review. Consider a hypothetical patent claim where 70% of experienced patent practitioners would conclude that the claim was properly granted, and 30% would oppose that conclusion. Such a patent claim seems reliable, because a substantial majority of practitioners believe it is patentable and was properly issued. However, if the patent is subjected to repeated <E T="03">de novo</E> patentability review each time it is enforced, it will no longer be reliable. For example, a patent with a 70% chance of surviving one <E T="03">de novo</E> patentability review has less than a 50% chance of withstanding two or more <E T="03">de novo</E> patentability challenges. Thus, even extremely strong patents depend on a presumption of validity for their survival. <E T="03">Congress gave the Director broad discretion to identify the circumstances when IPR proceedings would or would not benefit the patent system.</E> IPRs are a powerful tool for reassessing patent validity because they subject the patent to essentially <E T="03">de novo</E> review. In an IPR proceeding, the petitioner needs to prove unpatentability by only a preponderance of the evidence, which is the same standard the Office used to grant the patent. 35 U.S.C. 316(e). However, when it passed the AIA, Congress “recognize[d] the importance of quiet title to patent owners to ensure continued investment resources” and did not want “repeated litigation and administrative attacks on the validity of a patent.” H.R. Rep. No. 112-98, at 48 (2011). The AIA House Committee report found that such repeated challenges “would frustrate the purpose of the” AIA and could destabilize the patent system. <E T="03">Id.</E> In the Senate committee report, Senator Kyl, one of the bill's sponsors, and others agreed. “Whatever post grant system is ultimately devised, at some point the patent should be final and the inventor should enjoy the benefit of their invention without a cloud of uncertainty lingering over it during the full life of the patent.” S. Rep. No. 110-259 at 71. “This uncertainty over the patent” created by unlimited challenges “would limit the ability of inventors to attract capital investment and further develop their innovation and bring it to the marketplace.” <E T="03">Id.</E> at 72. Senator Kyl also emphasized that IPRs “should generally serve as a complete substitute for at least some phase of the litigation.” <E T="03">Id.</E> To protect quiet title to patent rights necessary to drive investment, Congress left in place the presumption of patent validity in litigation in district court or at the ITC, and provided the Director with broad discretion to determine when the strong medicine of IPR proceedings would be appropriate. H.R. Rep. No. 112-98, at 48; <E T="03">see</E> 35 U.S.C. 315(d), 316(b). <E T="03">Serial and parallel validity challenges remain a significant problem for the patent system.</E> Approximately 54% of all IPR petitions filed since the passage of the AIA are one of multiple petitions against the same patent. To address the risks from serial and parallel challenges, and from challenges using substantially the same prior art and/or arguments previously presented to the Office, the Office has designated a number of PTAB decisions as precedential. <E T="03">See, e.g., Gen. Plastic Indus. Co., Ltd.</E> v. <E T="03">Canon Kabushiki Kaisha,</E> IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to section II.B.4.i) (serial petitions); <E T="03">Valve Corp.</E> v. <E T="03">Elec. Scripting Prods., Inc.,</E> IPR2019-00062, Paper 11 (PTAB Apr. 2, 2019) (precedential) (serial petitions); <E T="03">Comcast Cable Commc'ns, LLC</E> v. <E T="03">Rovi Guides, Inc.,</E> IPR2019-00224, Paper 10 (PTAB Apr. 3, 2019) (parallel petitions); <E T="03">Apple</E> v. <E T="03">Fintiv,</E> IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (co-pending district court litigation); <E T="03">Advanced Bionics, LLC</E> v. <E T="03">MED-EL Elektromedizinische Geräte GmbH,</E> IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (prior art considered during examination). Despite th ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━ Preview showing 10k of 53k characters. Full document text is stored and available for version comparison. ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━