AIPLA Comments to USPTO on PTAB NPRM

Arlington, VA. December 2, 2025 - The American Intellectual Property Law Association (AIPLA) submitted comments in response to the USPTO's October 17, 2025, Notice of Proposed Rulemaking on Revisions to the PTAB's Rules of Practice. AIPLA has long supported many of the goals that seemingly underly the proposed rules. Like the PREVAIL Act, which has AIPLA's ongoing support, the proposed rules would: encourage accused patent infringers to choose a single forum for validity challenges, avoid the risk of conflicting decisions on validity, and refine IPR estoppels to reduce the likelihood of serial patent challenges at the USPTO. 

AIPLA's comments identify several areas of concern, however, with the proposed rules as they are currently written. One of AIPLA's concerns is that the proposed rules would prevent petitioners from subsequently asserting district court defenses that Congress did not preclude when drafting the AIA. The stipulations required under the proposed rule would restrict petitioners from raising district court validity challenges based on art that cannot be asserted in IPR proceedings. Another area of concern is the way the proposed rules would significantly change estoppels Congress defined in the AIA. The proposed rules would foreclose IPR proceedings for all future parties after any unsuccessful challenge to a patent's validity by any challenger, and no matter the reason—and not just on the challenged claims but also for any dependent claims of an unsuccessfully challenged independent claim. In addition to these primary areas of concern, AIPLA's comments offer constructive feedback and identify many potentially overlooked or unintended consequences of the proposed rules. In sum, although AIPLA supports the USPTO's efforts to improve the balance between patent owners and accused infringers in IPR proceedings, the proposed rules would benefit from further consideration and amendment as identified in AIPLA's comments. 

Click to the right to read the complete comments.