The USPTO proposes IPR Restrictions that 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.
You can learn more about IPR’s, and opposing patents in general, from our FAQ section: Patent FAQs- Opposing Patents
And a YouTube FishFAQ’s video on Opposing Patents is available as well.
Related articles in the USPTO’s IPR development: USPTO Slams the AAPA Window Shut — Shockwave’s Over Before It Started
The Fintiv Pendulum Swings Back — What Patent Litigators Need to Know