Innovation Alliance Pushes for Trump Admin to Finalize Proposed PTAB Changes

On the eve of the one-year anniversary of the U.S. Patent and Trademark Office’s (USPTO’s) Notice of Proposed Rulemaking (NPRM) to revise the rules of practice for the Patent Trial and Appeal Board (PTAB), the Innovation Alliance is urging the administration to finalize the proposal.

The NPRM was published on October 16, 2025, with the aim of focusing inter partes review (IPR) 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 at the time said that, under current practice, “the Office is concerned that even extremely strong patents become unreliable when subject to serial or parallel challenges.”

The NPRM, among other changes, 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.”

The deadline for comments on the NPRM was December 2, 2025. Among the 11,000+ comments was support from members of congress such as Senators Thom Tillis (R-NC) and Chris Coons (D-DE) and Representatives Nathaniel Moran (R-TX) and Deborah Ross (D-NC), who also support the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act, which deals with many of the same issues as the NPRM. The Council for Innovation Promotion (C4IP) likewise emphasized the importance of the Office vocally supporting the PREVAIL Act in order to ensure a solution “that is less subject to revision under successive USPTO leadership.” While C4IP said it generally supports the rules package and commended Squires and then-Acting Director Coke Morgan Stewart for their decisive leadership in introducing changes to PTAB practice, the comment underscored that there should still be a clear path to challenging a patent at the PTAB and warned the Office against “inadvertently disincentivizing use of [IPRs] altogether, which would undermine congressional intent in a different way.”

Opposition to the rules package included 14 former lawmakers—including one of the authors of the America Invents Act (AIA), former Senator Patrick Leahy (D-VT)—who warned the USPTO that the proposed rule “runs afoul of the AIA on multiple fronts.”

Specifically, the commenters charged that the USPTO does not have authority to revise the AIA by requiring that parties waive defenses in district court beyond those they “raised or reasonably could have raised” at the PTAB or by “binding PTAB petitioners to any prior litigation regarding the patent in question, regardless of whether the petitioner was a ‘real party in interest’ or ‘in privy’ in those cases.” Furthermore, said the comment, the proposal to bar petitioners from filing IPRs within the one-year timeframe set forth in the AIA if there is parallel litigation that is likely to conclude prior to a final written decision constitutes “a nonstatutory barrier to PTAB access and violates the AIA’s intent.”

But Innovation Alliance Executive Director Brian Pomper today said that “these reforms would restore greater fairness, efficiency and predictability to patent adjudication while advancing key principles reflected in the bipartisan, bicameral PREVAIL Act.”

Pomper commended Commerce Secretary Howard Lutnick and USPTO Director John Squires for introducing the rulemaking and said “nearly a year after it was proposed, it is time for the Administration and USPTO to finish the job and finalize this NPRM.”

During the recent Senate IP Subcommittee’s Oversight Hearing of the USPTO, Squires said the NPRM has been sitting at the Office for Management and Budget (OMB) following USPTO vetting of the comments, about 2,800 of which were unique. Senators Mazie Hirono (D-HI) and Chris Coons (D-DE) urged action on the rule, but also agreed that a legislative, and therefore permanent, solution to the issues addressed in the NPRM would be preferable, such as the PREVAIL Act. However, both PREVAIL and the “Patent Eligibility Restoration Act” (PERA) have been stalled in Congress since last term.

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