PTAB Rule Revamp: Director Takes Over Institution; Proposal Restricts IPRs with Parallel 102/103 Challenges

The past week ended with a series of changes that could significantly reshape the Patent Trial and Appeal Board (PTAB). On October 17, recently confirmed USPTO Director John Squires announced that the entire America Invents Act (AIA) review institution process would now be handled by the director, including the assessment of discretionary denial requests as well as the merits and nondiscretionary factors—making those determinations with no accompanying written decisions in most cases. That same day, the USPTO also published a Notice of Proposed Rulemaking (NPRM) that would bar AIA review institution unless petitioners stipulate not to raise invalidity challenges under Section 102 or 103 in parallel litigation, where the parallel forum would likely address validity on that basis before the PTAB issues its final written decision, or where the patent’s validity has already been upheld by another forum.