USPTO's PTAB Rulemaking Signals a Major Shift in Inter Partes Review Practice

On August 3, 2026, K&L Gates reported that the U.S. Patent and Trademark Office's final rule 'Revision to Rules of Practice Before the Patent Trial and Appeal Board' (published in the rulemaking docket at 90 FR 48335, RIN 0651-AD89) has completed review by the Office of Information and Regulatory Affairs under Executive Order 12866 — the final procedural step before publication in the Federal Register. The rule is expected to reshape inter partes review (IPR) practice before the Patent Trial and Appeal Board (PTAB).

The rulemaking began on October 17, 2025, when USPTO Director John A. Squires issued a notice of proposed rulemaking that would significantly limit the availability of IPR proceedings where parallel district court litigation has already progressed. The proposal drew an extraordinary response: approximately 11,442 public comments, reflecting intense interest from patent owners, accused infringers, technology companies and the pharmaceutical sector.

Under the proposed framework, petitioners would face new stipulation requirements and discretionary-denial considerations tied to the status of co-pending litigation, including the 'settled expectations' of patent owners. The policy intent, according to the USPTO, is to reduce duplicative proceedings between the PTAB and the federal courts, lower the cost of resolving patent disputes, and increase the predictability and reliability of issued patent rights.

Practitioners note that once the final rule takes effect, accused infringers will need to decide much earlier whether to pursue validity challenges at the PTAB or in court, and patent owners may regain leverage in litigation strategy. Companies with active IPR dockets are advised to review pending and planned petitions against the new criteria, since petitions filed after a district court case is well advanced may no longer be entertained.

The rulemaking is the most consequential PTAB reform since the America Invents Act created the IPR system, and commentators expect legal challenges and further guidance from the Office once the final text is published. Observers will also watch how the new rules interact with the PTAB's existing discretionary-denial jurisprudence developed under the Fintiv framework.

Original Link: https://www.iplawwatch.com/2026/08/03/usptos-ptab-rulemaking-signals-a-major-shift-in-ipr-practice/