USPTO’s Proposed IPR Rule Could Strengthen Patent Validity and Reshape Enforcement Trends

As of October 2025, United States Patent and Trademark Office (USPTO) Director John A. Squires has reclaimed authority to decide all patent review institution proceedings. This responsibility was previously delegated to judges at the Patent Trial and Appeal Board (PTAB). The USPTO also recently issued a notice of proposed rulemaking that could significantly reshape how inter partes reviews (IPRs) are instituted before the Patent Trial and Appeal Board (PTAB). In tandem with this proposal, the USPTO Director has announced that discretion determinations regarding institution will now be made by the Director in consultation with the PTAB judges. This marks a significant departure from the USPTO’s established practice, dating back to the first PTAB trial proceedings in 2012, where a merits panel of Administrative Patent Judges (APJs or PTAB judges) decided whether to institute trial on each petition.

This also marks a significant procedural shift that will likely begin changing the IPR landscape immediately, even before the proposed rules are decided. For patent owners and their patent counsel, this evolving approach presents both advantages in strengthening issued patents and new strategic challenges regarding portfolio management, litigation coordination, and market behavior.

The proposed rule would amend USPTO regulations to limit the institution of IPRs in several key ways. For example, an IPR would not be instituted if the same claim or an independent claim of the same patent has already been reviewed and upheld in litigation, another PTAB proceeding, an International Trade Commission (ITC) investigation, or an ex parte reexamination. An institution could also be denied if a parallel proceeding, such as a district court case or ITC action, is likely to reach a validity decision before the PTAB issues its final written decision. Petitioners seeking IPR institution would be further required to stipulate that, if the IPR is instituted, they will not pursue invalidity challenges under 35 U.S.C. §§ 102 or 103 (i.e., anticipation and obviousness) in any other forum. This stipulation would extend beyond the current statutory estoppel provisions of 35 U.S.C. § 315(e) and appears to operate as a congressional workaround to the limitations of § 315(e) and the case law interpreting it, effectively broadening the estoppel that applies to petitioners.^[1]

Observers expect that this new directive, together with the proposed rule changes, could lead to a further decline in IPR institution rates. This trend favors patent owners, and many view the change as part of a broader effort by the Trump administration to limit post-grant patent challenges. For patent owners, this proposed rule could enhance patent reliability by reducing serial IPR challenges and reinforcing the presumption of validity after a successful defense. For companies that rely on robust patent portfolios to support investment, mergers, or licensing, this additional protection offers more substantial leverage in negotiations and enforcement. Conversely, for accused infringers and challengers, the proposal constrains the timing and forum selection for attacking patents, underscoring the importance of coordinated litigation strategies and early action.

Furthermore, the proposed rule appears to extend estoppel-type effects beyond the scope of current statutory authority, which raises questions about whether the USPTO has the necessary delegation under 35 U.S.C. § 316(b) to adopt such restrictions. The proposal remains subject to public comment and revision before it is finalized. It also leaves unresolved broader questions surrounding discretionary denials under § 314(a), including the “settled expectations” doctrine that the Director has invoked to deny review of older, long-uncontested patents.

Another significant consequence of the rule, if adopted, could be an increase in patent enforcement by non-practicing entities (NPEs), also known as patent trolls. Once a patent asserted by an NPE is challenged and upheld as valid, subsequent defendants could be barred from raising similar invalidity challenges through the IPR process. This would effectively shield those patents from repeated administrative scrutiny and could embolden NPEs to pursue broader and more aggressive enforcement campaigns against multiple defendants. The result may increase settlement pressure on accused infringers, as the most cost-effective means of invalidating weak patents through the PTAB process would no longer be available once the patent survives an initial challenge. This shift may also drive more validity disputes into federal courts, reversing some of the efficiency gains the America Invents Act sought to achieve by creating the IPR framework.

Beyond the potential rise in NPE activity, several other trends may emerge if this rule is finalized. First, the change could spur more preemptive litigation filings by accused infringers, who may rush to district court to secure a validity determination before a patent owner obtains a favorable ruling that forecloses later IPR challenges. Second, large technology companies that rely on IPRs to manage litigation risk may begin forming coordinated defense coalitions or joint ventures to challenge problematic patents early, before any single proceeding limits their collective options. Third, the role of patent due diligence in corporate transactions may expand, as buyers and investors will need to consider not only the strength of a portfolio’s claims but also whether those claims have been previously upheld, potentially making them immune from future IPR challenges. Finally, an increased reliance on federal courts for invalidity determinations would lengthen the overall timeline and cost of patent litigation, motivating parties to settle more frequently and earlier in the process.

Given these possible outcomes, both patent owners and challengers should closely track this rulemaking. Patent owners should evaluate which patents in their portfolios have survived prior validity challenges, as these may gain enhanced value under the new framework. They should also consider documenting commercialization and market reliance activities to strengthen “settled expectations” arguments against future challenges. For challengers, early and coordinated action will be essential to preserve access to IPRs. Defendants facing NPE suits should plan for greater use of declaratory judgment actions and coordinated defense strategies to counter the diminished availability of administrative review.

Overall, the USPTO’s proposed rule represents a significant potential inflection point in post-grant practice. While it intends to reinforce patent stability and align USPTO procedures with the America Invents Act, it may also alter the balance of power between patent owners and accused infringers. Stronger patents may encourage innovation and investment, but they may also encourage opportunistic enforcement. Thus, this rule carries both protective and disruptive potential. Whether or not the rule is adopted in its current form, this proposal marks a decisive moment for stakeholders to reassess how validity challenges will be pursued and defended in the years ahead.

^[1] The newly proposed rules apply only to IPRs and do not affect post-grant reviews (PGRs) or ex parte reexaminations (EPRs).