USPTO to Centralize IPR Trial Decisions Under Director's Authority
USPTO proposes to unify IPR institution decisions under the Director and restrict repeat challenges.
Why it matters: Patent litigators and in-house counsel face strategic shifts as the USPTO aims to streamline PTAB practice and curb duplicative IPR filings. These changes could limit parallel proceedings and adjust the balance of power in patent disputes.
- USPTO proposed IPR rule changes on August 3, 2023, targeting institution authority and procedural limits.
- Effective October 20, 2023, the USPTO Director assumes sole authority to decide IPR and PGR trial institutions, replacing PTAB panels.
- New rules would bar IPR petitions on patents already upheld against invalidity challenges and require waivers for parallel forum positions.
- March 11, 2023 memorandum adds domestic manufacturing and small business considerations to institution discretion, emphasizing patent holder protections.
On August 3, 2023, the USPTO announced proposed rule changes that centralize inter partes review (IPR) and post-grant review (PGR) trial institution decisions under the USPTO Director, effective October 20, 2023. This replaces the current practice of Patent Trial and Appeal Board (PTAB) panels making these determinations.
Director Kathi Vidal stated the move aims to "promote efficiency and uniformity in IPR proceedings." This change is designed to reduce duplicative patent challenges and enhance agency discretion in managing PTAB workloads.
The proposed rules also seek to prohibit IPR petitions against patents that have survived previous invalidity challenges in court or USPTO proceedings. Petitioners would need to waive certain invalidity arguments (anticipation or obviousness) in any parallel lawsuits or proceedings, reducing repetitive challenges to the same patent claims.
On March 11, 2023, Director Vidal issued a memorandum outlining additional factors to consider when deciding institution, including the impact on domestic manufacturing and small businesses. This memo emphasizes protecting patent owners from excessive litigation burdens and represents a shift towards a more discretionary approach.
Legal experts from Foley & Lardner LLP note that these proposals could reshape patent enforcement strategies, as the Director’s increased authority may lead to more consistent but narrower institution outcomes.
Practitioners will need to monitor the final rulemaking closely and adapt IPR filings accordingly, since these changes could affect timing, argumentation, and the likelihood of institution at the PTAB.
By the numbers:
- October 20, 2023 — Effective date of USPTO Director’s authority over IPR and PGR institution decisions
- August 3, 2023 — Date USPTO announced proposed IPR rule changes
- March 11, 2023 — Date of USPTO memorandum adding new institution discretion factors
Yes, but: These proposals remain subject to public comment and revision before finalization, and the full impact on PTAB practice will depend on the final rules.
What's next: USPTO is accepting public comments on the proposed rules until September 30, 2023, before issuing final regulations later this year.