Focus on the USPTO: New Rules Reshape the Interview Procedure (IPR)

The United States Patent and Trademark Office (USPTO) recently proposed significant rule changes to the interrogation process (IPR) before the Patent Trial and Appeal Board (PTAB). These revisions are intended to improve the fairness, efficiency, and predictability of patent disputes and discourage repetitive and costly litigation. The new amendments do not apply to post-grant review proceedings, which must be filed within nine months of patent issuance. The core goal of this proposal is to protect the "quiet title" of patents, reducing the risk of repeated challenges during a patent's lifecycle and making "intrinsically strong" patents more reliable, thereby encouraging investment in innovation.

Under the revised law, after an IPR is established, the applicant must declare that it will not initiate invalidation proceedings under 35 USC §§ 102 or 103 elsewhere, including in district court and at the International Trade Commission (ITC). The USPTO aims to ensure that IPR is a true alternative to litigation, rather than a supplement. If a case is pending in another forum, the declaration must be submitted to the PTAB and that forum. Furthermore, the prohibition of estoppel remains applicable.

For claims previously ruled valid:

• Proposed § 42.108(e) would prohibit the initiation of an IPR with respect to a challenged claim or an independent claim of a patent that has been found valid or allowable, based on the following grounds:
  • District Court Trial or Summary Judgment
  • ITC ruling
  • The Federal Circuit has affirmed the validity of a claim or reversed a lower court/ITC invalidity ruling.
  • PTAB Final Written Decision
  • External reexamination (initiated by someone other than the patent owner)

Under proposed § 42.108(f), an IPR would not be initiated if another forum could determine validity before the PTAB renders its final decision.

However, there are special exceptions, such as prior challenges based on bad faith or significant changes in the law, or ordinary new evidence or arguments that are ineligible.