NEWS
USPTO Proposes Major IPR Changes: What Patent Owners Should Know
Proposed USPTO IPR Rules Could Strengthen Patent Protection
The USPTO is considering rules that could fundamentally change how inter partes review (IPR) works. If finalized, these changes would make it harder for third parties to challenge patents at the PTAB. This could be a big win for patent owners—but it also raises strategic questions for anyone considering an IPR. Here’s what patentees need to know:
1. Previous Validity Findings Could Shield Your Patent from IPR Challenges
The USPTO would bar IPRs if the challenged claims—or their dependent claims—have already been found valid in prior proceedings. This includes district courts, ITC, or PTAB trials. Even dependent claims could be protected if the corresponding independent claim survived. For patent owners, this means patents that have held up under scrutiny may now enjoy stronger protection against repeated attacks.
2. Parallel Litigation May Limit the Ability to File IPRs
If a patent is already involved in ongoing litigation, and the court is likely to reach a validity decision before the PTAB concludes, the USPTO could deny an IPR. This formalizes what has been called the Fintiv framework. Patent owners benefit because this reduces the risk of simultaneous challenges in court and at the PTAB. The result: more predictable enforcement and litigation outcomes.
3. Petitioners Must Commit to Binding Stipulations
Under the proposed rules, petitioners would have to commit not to raise anticipation or obviousness arguments anywhere else. This goes beyond current estoppel rules and further limits duplicative challenges, effectively giving patent owners more control over the PTAB forum.
Exceptions to IPR Denial Are Limited and Narrow
The rules allow IPRs in very limited cases, such as bad-faith prior challenges or major changes in law. Routine new evidence or legal arguments will generally not reopen a previously defended patent.
What These IPR Changes Mean for Patent Owners
- Patents that have survived prior scrutiny may now be more secure from repeated PTAB challenges.
- Ongoing litigation may reduce the likelihood of parallel PTAB proceedings, simplifying enforcement strategy.
- Stronger IPR protections can make patents more valuable for licensing or enforcement, as serial attacks are curtailed.
- Strategic awareness remains critical: understanding prior proceedings, current litigation, and the timing of potential IPRs is essential.
The USPTO is taking comments on these proposed rules for a short 30-day period, and patent owners should monitor these developments closely, particularly if their patents are frequently challenged.
Patentees in Indonesia: Don’t Forget Your 31 December 2025 Statement of Working
If you hold a patent in Indonesia, this is your annual wake-up call: the Statement of Working (SOW) is due 31 December 2025. This isn’t optional. Under Article 20A of Indonesia’s 2024 Patent Law, patent holders must report whether they are actually using their patents in Indonesia.
Why does this matter? Failing to submit the SOW isn’t just a clerical slip — it’s breaking the law. Since 2016, Indonesia has warned that patents not used locally risk a compulsory license or even partial or full invalidation. The 2024 law reinforces this risk.
So what should you do? Prepare and submit your Statement of Working before 31 December 2025. This isn’t a one-time task — it’s required every year. Filing on time keeps you compliant and protects your patent rights in Indonesia.
The takeaway: if your patent isn’t actively used or you haven’t filed your SOW, act now. The law doesn’t wait — and neither should you.
For foreign patent holders, we have a FAQ set up on the Statement of Work; where and when it is required. It can be found at the bottom of the page here: https://fishiplaw.com/faqs/patent-faqs/faq-foreign-filing/
Why IPR Decisions Don’t Preclude District Court Litigation
An Illustration from Life of Issue Preclusion
The kids are fighting over something and bring it to me to resolve. I don’t really want to get involved in whatever they’re arguing about. Instead of just telling them to knock it off, I agree to hear them out on one condition: if they’re going to drag me into this, they have to accept my decision and move on.
Each kid is convinced he’s absolutely right, so they agree. After listening to both number 1 and number 2’s arguments, I decide number 2 was wrong. I tell him that number 1 is right and that he needs to apologize. They both leave, number 1 looking smug and number 2 pouting.
Five minutes later, number 2 comes back. He starts making the same arguments again, insisting I must not have understood the first time. I stop him right there and remind him that this issue has already been decided. He agreed to accept the judgment.
This is the basic legal principle of “issue preclusion”. Once a court has finally decided a specific issue of fact or law, the parties can’t re-litigate that same issue in a later case. This is true even if later case involves different claims.
Why Patent Cases Often Have Two Battles: PTAB vs. District Court
Issue preclusion comes up frequently in patent cases. These cases often involve two sequential proceedings: an Inter Partes Review (IPR) at the Patent Trial and Appeal Board, followed by district court litigation.
An IPR may cancel some claims. After that, the patentee often amends the lawsuit to assert similar—but not identical—claims in court. The accused infringer naturally argues that the PTAB has already decided the relevant issues. They claim the patentee should not get another bite at the apple.
The Federal Circuit’s Take: Different Standards, Different Outcomes
The Federal Circuit has generally rejected that argument. Invalidity in an IPR is decided under the lower preponderance of the evidence standard. Invalidity in district court must be proven by clear and convincing evidence. Because of this difference, the two proceedings do not resolve the “same issue” for purposes of issue preclusion. In short, what counts as “already decided” in an IPR often isn’t “already decided” in court.
Number 2 would certainly approve.
Summary of Causam Enterprises, Inc. v. International Trade Commission (Fed. Cir. Oct. 15, 2025)
Wow, the Federal Circuit seriously narrowed the scope of some patent assignments.
The Federal Circuit held that a 2007 patent assignment did not cover continuation-in-part (CIP) applications. The assignment referenced “divisions, reissues, continuations, and extensions,” but did not mention CIPs. Relying on standard contract principles, the court refused to insert terms the parties did not include.
The panel emphasized that continuations and CIPs are distinct under long-settled patent law. Continuations cannot add new matter, while CIPs can. That difference carries real legal and practical consequences for ownership and recordation.
The opinion contrasts with University of New Mexico v. Knight (2003), where similar assignment language was held to include CIPs. The court distinguished Knight because that case involved additional agreements with broad language transferring ownership of “all related patents.”
While the panel’s analysis was clear, commentators noted it was somewhat formalistic, ignoring functional issues like potential “gamesmanship” — where a drafter might add nominal new material to refile as a CIP and thereby alter ownership.
Ultimately, the ownership dispute was moot because the related patent claim had already been found invalid for obviousness in a companion IPR proceeding.
Automated Telephone Line Open
We just opened up a new service: a telephone line: (949) 943-8311 . You can call and get answers to basic Intellectual Property questions. We have text FAQs available on our website. We also have a text chatbot available too that uses a personalized Chat GPT. The Chatbot accesses information from the FAQs and Bob’s books: White Space Patenting, and Green Fields Patenting.
But if you want to ask the questions with voice rather than text them, this might be the option for you.
The new Voice line can be accessed at (949) 943-8311.
Discovery Gamesmanship Backfires: A Lesson in Playing Fast and Loose
Every so often, the Federal Circuit hands down a decision that’s less about patents and more about human nature. Magēmā (pronounced: Maggie-May) Technology v. Phillips 66 is one of those cases.
In the initial trial, Phillips convinced the magistrate during discovery that Magēmā didn’t need actual test data — formulas would be good enough. Then, once trial rolled around, Phillips told the jury the exact opposite: no test data, no infringement.
The district court let it slide, and the jury came back with a broad-brush “no infringement.” But on appeal, the Federal Circuit said, hold on a second. When a party spends the whole trial hammering on a theory it promised wasn’t necessary in discovery, you don’t get to call that “harmless error.” Judge Bumb, sitting by designation, had the perfect metaphor: this wasn’t pepper sprinkled here and there — the whole trial was marinated in it.
So, new trial. Phillips’ gamesmanship, instead of locking in a win, ended up boomeranging right back at them.
Magēmā also tried to raise a claim construction issue under O2 Micro, but that one fizzled. You can’t complain about claim scope being left to the jury if you never asked the court to construe the terms in the first place.
Because I hate litigation gamesmanship, I am very happy to see this outcome. Unfortunately it is allowed way too often. But at least this time, the party playing the games didn’t profit.
March-In Madness: Harvard, Bayh-Dole, and the Trump Administration
When politicians get involved in patent law, things usually get messy — and the latest spat between the Trump Administration and Harvard over the Bayh-Dole Act is no exception.
What Is the Bayh-Dole Act and Why It Matters
The 1970s Patent Problem: Why Congress Passed Bayh-Dole
Back in the 1970s, the U.S. government had a problem: it was sitting on a mountain of patents — roughly 28,000 of them — generated from taxpayer-funded research. Fewer than 5% of those patents were ever licensed, let alone commercialized. Why? Because government ownership meant non-exclusive licenses, bureaucratic hurdles, and no incentive for anyone to put serious money into development.
How the Bayh-Dole Act Changed University Patent Ownership
Enter the Bayh-Dole Act of 1980. Congress flipped the script: universities, nonprofits, and small businesses could now keep the patents from federally funded research, provided they played by certain rules. It was a win-win: researchers got the chance to commercialize, investors got certainty, and the public (in theory) got products instead of dusty patent files.
Understanding March-In Rights Under Bayh-Dole
But Congress also built in a big stick — the “march-in” rights. If an institution wasn’t doing its job, the government could “march in” and force licensing of the invention.
The Four Legal Triggers for Federal March-In Authority
The statute lists four triggers:
- No practical application.
- Health or safety needs not being met.
- Public use requirements not satisfied.
- Failure to substantially manufacture in the U.S.
Why No Administration Has Ever Exercised March-In Rights
Sounds dramatic, right? Except here’s the kicker: in over forty years, no administration has ever actually marched in. Plenty of petitions, lots of noise — zero follow-through.
Harvard and the Trump Administration: A Bayh-Dole Showdown
According to reports, the Trump Administration dusted off those march-in provisions and pointed them at Harvard. Commerce sent a letter accusing the university of failing to comply with Bayh-Dole. Harvard fired back, calling the move political payback for its defense of academic freedom.
Political Pressure or Legal Enforcement?
Now, whether you buy Harvard’s explanation or the Administration’s, the bigger point is this: a march-in threat is almost always more about leverage than law. It’s the sword hanging on the wall. Agencies wave it around when they want to pressure a university or company to fall in line.
Bayh-Dole Compliance Requirements for Federally Funded Research
Here’s the practical takeaway for innovators: if you’re working with federal funding, Bayh-Dole compliance isn’t optional. You need to file invention disclosures on time, elect title properly, and make sure your commercialization plans check the right boxes. Screw up the paperwork, and you give an agency an opening — political or not — to come knocking.
Why March-In Threats Matter for Startups and University Spin-Outs
And while Harvard can weather a march-in threat, a startup or small university spin-out might not. Investors don’t like uncertainty, and nothing says “uncertain” like the government hinting it could hand your patent to someone else.
March-In Rights: Bigfoot of Patent Law?
The Trump–Harvard drama is a reminder that Bayh-Dole’s march-in rights are the patent world’s version of Bigfoot: everyone talks about them, nobody’s seen them in the wild, but the threat alone can be enough to change behavior.