United States Patent and Trademark Office/USPTO Archives

USPTO Director to decide AIA petitions

The United States Patent and Trademark Office (USPTO) issued a memorandum on October 17, 2025, titled “Director Institution of AIA Trial Proceedings,” providing updated guidance to the Patent Trial & Appeal Board regarding the standards and procedures for instituting trial proceedings under the America Invents Act (AIA), including inter partes review (IPR) and post-grant review (PGR).

Since the AIA’s enactment in 2012, the Board’s trial proceedings have become a central mechanism for challenging the validity of issued patents. The institution phase, in which the Board decides whether to proceed with a trial, has been shaped by a series of precedential decisions and evolving USPTO policies, particularly regarding discretionary denials under 35 U.S.C. §§ 314(a) and 325(d).

The October 17, 2025, memorandum states that to “improve efficiency, consistency, and adherence to the statutory requirements for institution of trial, effective October 20, 2025, the Director will determine whether to institute trial for [IPR and PGR] proceedings.” If the Director determines that review is appropriate based on discretionary, merits-based, or other considerations, the USPTO will issue a summary notice granting institution for at least one challenged claim. If the Director determines review is not appropriate, the USPTO will issue a summary notice denying institution. For cases involving novel or complex issues, the Director may issue a detailed decision or refer the matter to one or more Board judges. A three-member Board panel will conduct all instituted reviews. The memorandum also notes that the USPTO has issued more than 580 prior decisions under interim processes that offer guidance on handling of discretionary factors.

Double trouble: Proposed IPR institution changes would limit duplicative proceedings

The United States Patent and Trademark Office (USPTO) proposed changes to the rules governing inter partes reviews (IPRs) before the Patent Trial & Appeal Board, including setting limits on use of IPR proceedings for patent claims that have already been challenged in a prior proceeding. According to the USPTO, the proposal is aimed at preventing duplicative litigation against patent holders and promoting fairness, efficiency, and predictability in patent disputes.

The Notice of Proposed Rulemaking introduces changes to 37 C.F.R. § 42.108 that would bar the institution of IPRs in cases where:

A petitioner refuses to stipulate that it won’t pursue invalidity challenges under §§ 102 or 103 in other venues, such as a district court or the US International Trade Commission (ITC).
The challenged claims were found not invalid or not unpatentable in a prior district court, ITC, Board reexamination, or Federal Circuit proceeding.
Parallel litigation involving the patent will likely reach a decision before the final IPR written decision.

The proposed rule would provide an exception to the proposed IPR limitations in “extraordinary circumstances,” such as a bad faith institution of a previous IPR or a substantial change in law that renders a prior challenge irrelevant.

The USPTO explained that the proposed changes will offer greater certainty for patent owners by reducing serial validity challenges, improving judicial efficiency by minimizing duplicative proceedings, and facilitating lower litigation costs and stronger investment incentives. The USPTO noted that the changes would benefit smaller technology companies, which often lack the litigation resources of larger companies and are more vulnerable to the effects of weaker patent rights.

The proposed changes would represent a significant shift in the availability of IPR for petitioners and would alter the timing and strategy of decisions about whether to pursue an IPR. Comments on the proposed rule changes are due by November 17, 2025, and can be submitted via the federal eRulemaking portal.

USPTO Director to decide AIA petitions

Double trouble: Proposed IPR institution changes would limit duplicative proceedings

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