USPTO Proposes New IPR Rules; Director to Handle Institution Decisions

On October 16, 2025, the U.S. Patent and Trademark Office issued a Notice of Proposed Rulemaking (NPRM) (formally published on October 17) relating to inter partes review (IPR) proceedings under the America Invents Act (AIA) conducted by the Patent Trial and Appeal Board (PTAB). The proposed rules apply to IPRs, not post-grant reviews (PGRs). The Office also announced the withdrawal of an earlier April 19, 2024 NPRM related to the PTAB’s exercise of discretion in instituting IPRs and PGRs. The USPTO Director then followed up with a memorandum on October 17, 2025, indicating that he will determine whether to institute IPRs and PGRs, effective October 20, 2025.

Memorandum on Director Institution of AIA Trials

Under this new process, decisions on institution will no longer involve the interim bifurcated process or a separate Board panel to consider merits (e.g., reasonable likelihood of success) or non-discretionary considerations. Rather, as a general matter, the Director himself, in consultation with at least three judges, will handle the entirety of the process for determining whether to institute an AIA trial, including on the merits.

The memorandum indicates that the Director will issue “a summary notice” to either grant or deny institution in cases, unless he determines that “detailed treatment of issues is appropriate” and refers the decision on institution to “one or more members of PTAB.” Current briefing processes will remain the same. The new process impacts all cases, except those already referred to a Board panel under the bifurcated process prior to October 20, 2025.

Proposed New Rules for IPRs

The new proposed rules seek to build upon the changes already made to PTAB practice earlier this year through decisions on institution issued under the new bifurcated process, as well as new Office memos and announcements.

As it relates to IPRs and PGRs, from 2017 to 2024, the Office created and refined four areas of practice relating to (1) serial petitions; (2) parallel petitions; (3) petitions raising the same or substantially the same art or arguments previously presented to the Office; and (4) parallel proceedings between PTAB and a district court or the ITC (Fintiv jurisprudence). Beyond recent changes in 2025 stemming from the new bifurcated process for determining whether to institute an AIA trial, the proposed rules provide additional limitations on the use of IPRs.

Specifically, in relation to IPRs (via 37 C.F.R. § 42.108), the proposed rules include:

• Requirement of a “super” stipulation: Precludes instituting or maintaining an IPR unless the petitioner files a stipulation not to pursue any invalidity challenges under 35 U.S.C. §§ 102 or 103 in other forums.
  • Currently, as relevant to a Fintiv analysis, stipulations are optional and often involve a Sotera stipulation, which relates to what a petitioner raised or reasonably could have raised in an IPR under §§ 102 or 103 based on patents or printed publications. The stipulation required by the proposed rule is broader in scope than a Sotera stipulation.
• Bar to institution based on prior upholding of claims under §§ 102 or 103 in another forum: Precludes instituting or maintaining an IPR if: (1) a district court or the ITC upholds the claims under §§ 102 or 103; (2) a final written decision in an AIA trial or a decision in an ex parte reexamination upholds the claims; or (3) the Federal Circuit reverses a finding of unpatentability or invalidity of the claim under §§ 102 or 103 in any forum.
  • Under 35 U.S.C. §315(e), estoppel attaches for the petitioner, its real party in interest or privity, in relation to challenged claims after the PTAB issues a final written decision. By contrast, some stakeholders may interpret this proposed provision, along with the one discussed below, as effectively changing IPRs to a “one and done” system, even if the other adjudication involves an unrelated party.
• Bar to institution if earlier adjudication in another forum under §§ 102 or 103 is “more likely than not”: Precludes instituting or maintaining an IPR if it is more likely than not, before the due date for the final written decision, any of the following will occur: (1) a district court trial where a party challenges the patent under §§ 102 or 103; (2) an initial or final determination by the ITC with respect to §§ 102 or 103; or (3) a final written decision by the PTAB.
  • Under current practice, the Fintiv analysis considers six factors, including whether a stay exists or is likely to exist, investment in the other proceeding, whether the petitioner and defendant are the same party, and the merits of the petition.
  • Under current practice, 35 U.S.C. § 325(d)/Advanced Bionics asks if the same or substantially the same art or arguments were before the Office, and if so, whether the Office erred in a manner material to the patentability of the challenged claims.
  • In addition, as noted above, estoppel under 35 U.S.C. § 315(e) attaches to challenged claims (not “the patent”) after the PTAB issues a final written decision. This estoppel only applies to the petitioner, its real party in interest or privity, not to any and all parties.
• A PTAB panel can refer a matter to the Director to decide whether to institute, notwithstanding the above, in “extraordinary circumstances,” such as bad faith or a substantial change in a statute or Supreme Court precedent.  
  • The “extraordinary circumstances” cannot include newly discovered prior art nor new case law except Supreme Court precedent, i.e., it does not include new Federal Circuit precedential case law.

The Office asks for comments from the public by November 17, 2025. The Office asks whether this proposed rule “strikes the appropriate balance between efficiency, fairness, and stability in the patent system.” Those who are interested and/or may be impacted by the proposed changes should consider providing comments and will need to do so relatively quickly.

Sterne Kessler has one of the most experienced and accomplished PTAB teams in the country. We are well-prepared to help clients navigate the new Director institution process, the new proposed rule, as well as other changes currently taking place at the Office, including new considerations under the bifurcated process for determining whether to institute an AIA trial.