Challengers striving to beat higher-ranked opponents at the US Open tennis tournament happening now in New York are not the only challengers facing tricky new situations. Parties wishing to challenge the validity of US patents are also facing new situations. For years, patent challengers have relied on inter partesreview (IPR) at the US Patent and Trademark Office (USPTO) as a valuable option. But new guidelines on discretionary denials of IPRs are set to take effect on September 1, 2025. These new guidelines may change how patent challengers make decisions about filing IPRs. This article provides options for navigating these changes.
The USPTO has discretion to deny an IPR petition, even if the petition meets the statutory basis for institution, based on a variety of factors. Recently, the USPTO has emphasized “settled expectations” in denying multiple IPRs in so-called discretionary denials. In general, the doctrine of settled expectations considers whether the challenged patent has been in effect for a long enough time—as little as three years per recent USPTO decisions—that the patent owner has a settled expectation that the patent is valid and enforceable. That circumstance weighs in favor of denying institution of the IPR. The USPTO has also recently made similar arguments in appellate court cases at the Federal Circuit, including In re: Motorola Solutions, Inc. and In re: SAP America Inc.
The time frame for filing IPRs may now be less than challengers had previously relied on in deciding whether to file IPR petitions. In view of this changing landscape, it is a good time to consider various options that parties may consider for challenging patents. Here are some examples:
- Monitoring issued US patents in a technological area of interest using Google Patents or another tool. Patents of interest for potential IPR filing may thus be identified very soon after issuance, which may help prevent USPTO discretionary denial of an IPR on the basis of the patent’s age.
- Filing an ex parte reexamination requesting that a patent be reexamined in view of prior art patents and/or patent applications. There is no time limit for filing the reexamination, and any party (including third parties and patent owners) may file a reexamination request. Ex partereexaminations are typically much less expensive than IPRs. A more detailed explanation of ex parte reexaminations can be found on the USPTO website.
- Monitoring published (not yet issued) US patent applications in a technological area of interest using Google Patents or another tool. The USPTO allows anonymous third-party submissions of potentially relevant prior art (patents, published patent applications, journal articles, etc.) within six months of the patent application’s publication or other time frames outlined by the USPTO. Submitting the prior art ensures that the patent examiner will consider the prior art, which may help prevent the patent application from proceeding to patent issuance. However, should the patent examiner not find the prior art compelling and allow the patent application to issue as a patent, the prior art may be less effective if used later by a third party to challenge the patent (e.g., in an IPR or in litigation).
- Filing a lawsuit in court. This option is typically much more costly and time-consuming than the options above that may be pursued before or instead of filing a lawsuit.
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