The United States Patent and Trademark Office (USPTO) recently made waves in the patent community by issuing a Notice of Proposed Rulemaking (NPRM) that would revise Inter Partes Review (IPR) practice before the Patent Trial and Appeal Board (PTAB), while simultaneously withdrawing a controversial, earlier NPRM from the Vidal era concerning serial and parallel petition practices. This two-pronged move signals a pivot in USPTO priorities and adds new layers of complexity and opportunity for patent applicants and their legal counsel.

At its core, the new NPRM is designed to limit repetitive and overlapping challenges to the same patent claims. Under the proposed changes, an IPR petitioner would be required to file a stipulation that it will not pursue invalidity challenges on the same grounds in other forums. Further, the USPTO would generally decline to institute an IPR when a patent’s claims have already been adjudicated in another forum or are likely to be determined in parallel proceedings. Exceptions would be carved out only for “exceptional circumstances.” In doing so, the USPTO frames the proposal as a mechanism to restore “quiet title” and reduce the burden of serial or parallel petitions, which the Office perceives as undermining even strong patents. (IPWatchdog)

Simultaneously, the USPTO officially withdrew the 2024 Vidal-era NPRM, which had attempted to codify changes around serial and parallel petition practices, discretionary denials, settlement and termination agreements, and the standards for denial of institution. That withdrawal reflects a recalibration in policy direction—suggesting the Office will seek more deliberate stakeholder input or take a more cautious approach. (GovDelivery)

What does all this mean for patent applicants and attorneys?

First, for current and future patent owners, the proposed rules—if adopted—offer protective features. A patent that has survived earlier adjudication may become less vulnerable to repeated IPR attacks on the same grounds. The new limitation on serial petitions and overlapping challenges offers assurance that the patent term won’t be perpetually under threat. But that protection comes with a caveat: the patent owner must vigilantly monitor and respond in other forums because the new rules would require petitioners to commit in writing to not pursue the same invalidity arguments elsewhere.

Second, the withdrawal of the Vidal-era rule signals that some previously anticipated doctrinal shifts may not arrive—at least not yet. Attorneys should temper expectations of sweeping changes to discretionary denial standards or settlement handling until the USPTO issues final rules. They should also stay alert for further NPRMs or policy statements. (IPWatchdog)

Third, counsel representing petitioners will need to tread more carefully. Before filing an IPR, strategists must evaluate whether alternative forums (district courts, PTAB, ITC) are likely to adjudicate the same claims. The decision to file an IPR must factor in whether challenges in those other forums will be disallowed, or whether “exceptional circumstances” can justify duplicative institution. The drafting of stipulations and inter-venue coordination become central strategic tools.

Fourth, the Office’s expressed concern that even high-quality patents can become “unreliable” under repeated challenges underscores the urgency for patent applicants to build robust prosecution records. Clear claim drafting, strong evidence of patentability, and well-documented examination histories will be more important than ever. The proposed rules suggest that the USPTO believes that overuse of IPRs may have diminished confidence in patent rights—making early strength and clarity in patent drafting a practical necessity. (IPWatchdog)

Attorneys must now prepare for a transitional period. Stakeholder comments to the NPRM (open through mid-November of 2025) will be critical. Counsel should coordinate with clients to evaluate how existing litigation, advisory opinions, and precedence might collide with the new framework. Firms will need to revisit strategies for patent portfolios that have been vulnerable to multiple IPR attacks—in particular, to consider whether to accelerate IPR petitions before rules change or adopt alternate defensive tactics.

In sum, the USPTO’s dual action—issuing a forward-looking NPRM while retreating from Vidal’s more aggressive reforms—marks a moment of recalibration in agency rulemaking. Applicants and counsel must be flexible, strategic, and proactive to adapt. Though final rules remain pending, the direction signals a move toward more stable patent rights protection and a reined-in regime for serial challenges.

If you are a patent holder, applicant, or legal counsel navigating these shifting rules, expert guidance is essential. Contact The Plus IP Firm today. Call Mark Terry at 786-443-7720 or email [email protected] to schedule a consultation. Our firm is ready to help you interpret proposed changes, adjust pending strategies, and build resilient IP portfolios in the evolving IPR landscape.