Overview
- The notice of proposed rulemaking would convert prior discretionary factors into hard rules that restrict when the PTAB may institute IPRs.
- Under proposed § 42.108(d), a petition would proceed only if the challenger stipulates not to pursue §§ 102 or 103 invalidity challenges in any other forum.
- Proposed § 42.108(e) would bar institution when the same claims, or their independent claims, have already been upheld on §§ 102/103 grounds in district court, the ITC, the PTAB, ex parte reexamination, or after a Federal Circuit reversal of invalidity.
- Proposed § 42.108(f) would preclude institution if another venue is likely to reach a validity decision before the PTAB, with only narrow exceptions for extraordinary circumstances under § 42.108(g).
- Comments are requested to docket PTO-P-2025-0025 by November 16, 2025, as the Office withdraws an earlier discretionary-denial proposal and the Federal Circuit weighs mandamus challenges, including an amicus filing by former Director Kathi Vidal for PIPLA.