Squires Reluctantly Grants 15-Day Extension on Comments to Proposed IPR Practice Rule

“While we endeavor to be responsive to stakeholders—and indeed are by granting an additional 15 days today for comment, on top of the 30-day period originally noticed—45 days total has now been provided….Now’s the time.” – Squires’ statement

The U.S. Patent and Trademark Office (USPTO) announced today that it is extending the comment period for a proposed rule published on October 17 by 15 days in response to requests from stakeholders.

The Notice of Proposed Rulemaking (NPRM) titled “Revision to Rules of Practice before the Patent Trial and Appeal Board” has as its stated goal “to focus inter partes review proceedings on patent claims that have not previously been challenged in litigation or where prior litigation was resolved at an early stage.” A press release issued on the NPRM said that, under current practice, “the Office is concerned that even extremely strong patents become unreliable when subject to serial or parallel challenges.”

The original deadline for comment was November 17, but that deadline has now been extended to December 2.

According to the Federal Register, 498 comments have been received so far at Regulations.gov. One of those comments is titled “Request for Extension of Time to Comment” and was submitted by organizations including the Electronic Frontier Foundation (EFF), The App Association, the High-Tech Inventors Alliance, Unified Patents, United for Patent Reform, and several others.

That comment requested that the deadline be extended one month, to December 17, and claimed that “the proposed rules…would represent a significant shift in the implementation of the America Invents Act validity reviews and their relation to district court litigation and other proceedings.”

It added that analysis of such a significant change “requires substantial analysis—and even more effort is required to assess how the rules may affect future litigation strategies…. Thirty days is plainly an insufficient time period to gather comments on a rule of this significance.”

However, the Office’s email today included a statement from USPTO Director John Squires making it clear that “although the previous Administration could not get it done, it is now past the time for concluding the process and issuing a final rule” on discretionary denial practice at the Patent Trial and Appeal Board (PTAB).” Squires added in his statement:

“For nearly four years, this Office has promised, discussed, and debated formal rulemaking on discretionary denial practice at the Patent Trial and Appeal Board… While we endeavor to be responsive to stakeholders—and indeed are by granting an additional 15 days today for comment, on top of the 30-day period originally noticed—45 days total has now been provided. This is an ample amount of time to respond, certainly in light of history here, and particularly in view of the wide-ranging and thorough airing these issues have received across our stakeholder communities over the past four years. Now’s the time.”

Among other changes, the proposed rule would:

“Require an IPR petitioner to file a stipulation not to pursue invalidity challenges under 35 U.S.C. §§ 102 or 103 in other forums;
Provide that the USPTO will not institute an IPR when the USPTO or another forum already has adjudicated patentability or validity of the claims;
Provide that the USPTO will not institute an IPR when another proceeding is likely to determine patentability or validity of the claims under §§ 102 or 103 first; and
Permit the USPTO to institute an IPR notwithstanding a prior adjudication or expected earlier determination on patentability or validity when exceptional circumstances exist.”

On the same day the NPRM was published, the Office officially withdrew a 2024 NPRM issued by former USPTO Director Kathi Vidal, which proposed to codify several changes around serial and parallel petitions practices; rules for briefing on discretionary denial requests; termination and settlement agreements; and the factors for consideration of discretionary denials.

Eileen McDermott Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at [...see more]

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Join the Discussion

5 comments so far. Add my comment.

Pro Say
November 11, 2025 11:33 am
1. Good point Anon. My concern is that the gov can decline publishing comments from the same person / entity (even if they’re (I’m) making different points and/or responding to the infringers’ comments).

I hope you’re (and at least a few others are) waiting to make your comments so you can tear the infringers arguments apart.

2. Good points all, my fellow Inventor. Hope PTO leadership is listening (and to others asking that infringer loop holes are closed).
Inventor
November 10, 2025 06:18 pm
PLEASE USE THE POINTS BELOW FOR YOUR OWN COMMENT SUBMISSIONS IN SUPPORT OF DIRECTOR SQUIRES’ PROPOSED NEW RULES. The “first loophole” bellow is especially important since director Squires (and everyone else) missed it in his proposed new rules.

Dear Director Squires:

I am an independent inventor with multiple patents and patent applications. My patents have been challenged serially in inter partes reviews (IPRs) and ex parte reexaminations (EPRs) by a large corporate infringer. It is a disgrace that the PTO and our laws allow such blatant harassment and abuse of process.

I would like to thank you for your initiative to stop serial patent challenges at the PTO. Your vision is absolutely correct that a patent challenger should have a SINGLE opportunity to challenge a patent in a SINGLE proceeding in a SINGLE venue (a court or PTO/PTAB, but not both).

I ask you to pay special attention to not leaving any loopholes that serial patent challengers can exploit. If you leave a loophole, they will certainly use it for further serial patent challenges and inventor harassment. The following are loopholes that I identified:

1. First loophole is the institution of EPRs (and possibly other PTO/PTAB proceedings) after past IPRs or during currently pending IPRs that your new rules do not address at all. Your new rules focus on institutions of future IPRs, but your new rules should also apply to the institutions of EPRs for patents that have past or pending IPRs to prevent patent challengers from using EPRs where the legal issues are already adjudicated in past IPRs or will be adjudicated in pending IPRs. If your new rules are not enhanced to apply to these “transitional” EPRs, serial patent challenges that you are trying to immediately prevent will be allowed to continue for at least another 1.5-2 years by allowing institutions of these “transitional” EPRs (“transitional” because the EPR institution decision will be after your new rules become effective, but the EPR’s matching IPR was instituted before your new rules became effective). Thus, your new rules should state that if there is a past or currently pending IPR, there was an opportunity to make the best arguments with the best prior art, and the same or another patent challenger’s EPR should be denied since the legal issues have been or will be decided in the past or pending IPR.

In addition to the importance of your new rules applying to EPRs, timing of when your new rules apply to EPRs is also very important. I am sure that serial patent challengers will accelerate their EPR fillings in expectation of your new rules and I am also sure that many other inventors are in a similar situation as mine expecting frontloaded EPRs before your rules become effective. Thus, in order for your new rules to actually prevent serial patent challenges and close this “transitional” EPR loophole, your new rules should apply to all EPR institution decisions after your new rules become effective – i.e. your new rules should apply to EPRs based on the EPR institution decision date (not EPR filing date) being after your new rules effective date, which is both logical and reasonable (certainly much more reasonable than allowing serial patent challenges and inventor harassment to continue).

2. Second loophole is in “(f) Parallel Litigation — Inter partes review shall not be instituted or maintained if, more likely than not, any of the following will occur, …, before the due date for the final written decision pursuant to 35 U.S.C. 316(a)(11): (1) … A district court trial …; (2) … an initial or final determination of the U.S. International Trade Commission …; or (3) … issuance of a final written decision by the Board under 35 U.S.C. 318(a) or 328(a). In the spirit of your vision that a patent challenger should have a SINLGE opportunity to challenge a patent in a SINGLE proceeding in a SINGLE venue, IPR, EPR, or other relevant PTO proceedings should be denied if there is any other parallel proceeding in any other venue that will adjudicate all or most legal issues in a patent. Paragraph (f)’s vague timing of the final written decision and whether it is more likely than not to occur before a parallel proceeding’s trial, initial or final determination, or final written decision is a loophole that will undoubtedly be exploited by serial patent challengers. The issue here is simple, you don’t want a patent challenger to get two opportunities since that is a serial challenge and harassment, which is what your new rules are trying to prevent. Specifically, for example, if there is a pending district court case, all IPRs, EPRs, or other relevant proceedings for the same patents should be denied because the patent challenger will have its single opportunity to challenge the patents in district court.

3. Third loophole is in “(g) institution in extraordinary circumstances” that would enable serial patent challengers and future pro-infringer anti-inventor PTO directors to allow serial patent challenges canceling your intended effects of the new rules. Thus, please further tighten your final rules to leave no opportunity for patent challengers or future PTO directors to abuse the system.

Sincerely,
Anon
November 10, 2025 02:04 pm
Pro Say,

I am all for this rather minimal extension of time – as long as time is permitted for others to come back and counter whatever the Efficient Infringer Lobby comes up with.

Let’s see them put maximum effort into their position. The more that they can do so, the less that they can come up with at some later date.
John Paul Archuleta
November 10, 2025 09:06 am
14th Amendment is due process 5th Amendment is just compensation like what I should get for my intellectual property and then you have the seventh amendment which is sue any government or any entity owing you more than $20 unless any of that has changed the 5th Amendment really stands the top if you could get intellectual property which is mentioned that’s just compensation Thank you I had to comment to correct.
Pro Say
November 7, 2025 11:01 am
“was submitted by organizations including the Electronic Frontier Foundation (EFF), The App Association, the High-Tech Inventors Alliance, Unified Patents, United for Patent Reform, and several others.”

Such time-extension requests from these band of innovation-stealing thieves should be ignored. Given that courts often require various briefing be provided in less than 30 days, another 15 days on top of the 30 they already have to issue comments . . . for them to cry their crocodile tears . . . is 15 days too long.

We all know what they’re going to complain about.

And bravo to the the government no longer putting up with ballot-stuffing duplicated comments. The majority of which hide the city and state they’re from.

Do these alleged commentators even exist?