The USPTO has a new trick up its sleeve — and if you own older patents, you might just like it. It’s called the “settled expectations” doctrine, and Acting Director Coke Morgan Stewart rolled it out earlier this year to decide whether to even start an inter partes review (IPR) proceeding.
The short version? The older your patent, the more likely the USPTO will say, “No thanks” to a late-stage challenge.
What’s the Big Idea?
The doctrine says that over time — usually seven years or more — both you (the patent owner) and the public start to operate on the assumption that your patent is valid and enforceable. Disrupting that after years of business decisions, licensing deals, and R&D planning is seen as unfair and destabilizing.
That “temporal shield” means that if someone waits too long to challenge your patent, the USPTO can deny the IPR even if they have decent prior art. This is purely discretionary — not a hard deadline like the 1-year IPR filing limit after you get sued — but it’s a powerful new factor.
Real-World Examples
In June 2025, the USPTO applied the doctrine in several cases:
- iRhythm v. Welch Allyn – The petitioner had known about the patent for years and still waited. The Director said, “Too late.”
- Dabico v. AXA Power – Even without proof anyone knew about the patent, the age alone was enough to create “settled expectations.”
- Intel v. Proxense – No upcoming trial, no litigation pressure… but nine-year-old patent? Denied.
- Cambridge v. Applied Optoelectronics – Seven- and nine-year-old patents were protected, newer ones weren’t.
These decisions all reinforce one thing: age matters now.
Why This Is a Big Shift
Up until now, IPR timing was dictated by two hard rules:
- 9 months after grant — post-grant review (PGR) only.
- 1 year after you’re sued — the IPR deadline.
Now we have a third, softer filter: If your patent’s been around a while, the USPTO might just refuse to touch it.
This is like laches flipped on its head. Traditionally, laches punished patent owners for waiting too long to sue. Now, it’s petitioners who get punished for waiting too long to challenge.
It’s also similar to trademark incontestability, where after five years a trademark becomes harder to challenge. The idea is that the longer rights have been public, the more stability matters.
Do I buy the “public reliance” argument for patents? Not entirely. The public doesn’t cheer when a bad patent stays on the books — they cheer when they can use technology without a license fee. But from a portfolio strategy standpoint, this is a gift for owners of older patents.
If you’ve got assets in the 7–10+ year range, you now have another shield. If you’re a challenger, you’d better move fast — waiting for litigation to get serious could mean the IPR door is slammed shut.
Bottom line: The “settled expectations” doctrine shifts the game. For owners, it’s more staying power. For challengers, it’s one more reason to act early.