USPTO director defends proposed limits on serial IPRs, lawmakers warn of fairness and litigation risks
Loading...
Summary
Director Squires told the House Judiciary panel that a proposed rule aims to curb repeated inter partes review filings by encouraging joinder and restoring finality; lawmakers from both parties pressed him on transparency, potential retroactive denials, effects on small inventors and whether the agency considered increased district‑court litigation costs.
Director Squires, the director of the U.S. Patent and Trademark Office, told the House Judiciary Committee on March 24 that a notice of proposed rulemaking seeks to "restore fairness and balance" to inter partes review (IPR) by reducing serial petitions and encouraging joinder.
"The answer isn't serial filings. We think the answer should be gang tackling," Squires said, describing the proposal as striving toward a "one join and done" model to produce finality in patent challenges.
Why it matters: Members across the panel warned that curbing access to the Patent Trial and Appeal Board (PTAB) could push more disputes into district court, increasing litigation costs for smaller businesses and potentially undermining patent reliability. Committee members repeatedly cited industry figures that district-court patent litigation averages far higher costs than PTAB proceedings.
Representative Massey, who led questioning in an early exchange, praised the effort to reduce uncertainty but said policy should reflect electoral outcomes: "Elections should matter," he said, while urging discretion and common sense in applying the law.
Democratic and Republican members both expressed concern about transparency in agency denials of institution. One committee member noted a rise in "bare-bones" summary denial orders and asked where petitioners and patent holders could find reasoning. Squires said the office has issued over 600 decisions with opinions where guidance is needed, and that, under the Administrative Procedure Act and the America Invents Act (AIA), the rulemaking must consider economic effects, resource allocation and system integrity.
Squires told the committee the PTO has received over 11,800 comments on the NPRM, and said about 2,800 were substantively unique. "By all means, we are looking at what the costs are in the rule," he said, adding that the agency is still working through the record and that it plans to respond to comments.
Lawmakers sought specifics about authority and timing. The director referenced 35 U.S.C. §316(b) and the agency's discretion to consider efficiency and system integrity in discretionary institution decisions. Some committee members pushed back, arguing that retroactive discretionary denials can strip parties of appellate options and should be tied to statutory authority.
Discussion also touched on national-security risks in IPR practice: Squires said the agency reinstated a real-party-in-interest (RPI) requirement and issued guidance disallowing officials or foreign sovereign actors from participating in PTAB proceedings. "Tell us your story," he said, describing the agency's effort to consider whether petitioners are harming U.S. manufacturers.
What comes next: The NPRM remains under review; Squires said the office intends to finalize a workable rule after considering comments. Members asked the PTO to provide additional data and to accept written questions for the record.
Sources and provenance: Committee questioning and Squires's responses on the proposed IPR rule appear in the hearing record (topic introduced at SEG 066; last related discussion at SEG 138).
