POST GRANT PULSE October 2025

New Institution Procedure

Effective October 20, 2025, the USPTO Director alone will:

1. Decide whether to institute an IPR based on discretionary factors and the merits; and
2. In routine cases, issue a summary notice granting or denying institution.

Thus, under the new procedure, PTAB judges will not make institution decisions, and the Director will not always provide detailed reasons for granting or denying institution.

New Proposed Rules

USPTO proposed new rules under which an IPR petition will be denied:

1. If petitioner fails to stipulate that it (and any real party interest and privy) will not raise grounds of invalidity for the patent under § 102 or 103 in any other proceeding;
2. If validity of the patent under § 102 or 103 previously was upheld by a district court, the ITC, a PTAB final decision, an ex parte reexam (not filed by the patent owner), or the Federal Circuit; or
3. If a district court trial, ITC determination, or PTAB final decision is more likely than not to address validity under § 102 or 103 before the due date for the IPR final decision.

Thus, under the proposed rules, the above scenarios would prohibit institution of an IPR rather than just serve as factors in a holistic analysis. The rules are not final yet, and the public may submit comments until November 17, 2025.

Other Updates 

The USPTO Director indicated the taking inconsistent positions, for example on claim construction, in an IPR petition and a district court case is another factor that will be considered in deciding whether to institute an IPR.

Authored by Robert Weinschenk, Celine Jimenez Crowson.