USPTO Extends IPR Institution Review Deadline, Allows Late Filings for Changed Circumstances
In-house counsel overseeing patent portfolios and parallel PTAB IPR and district court litigation must note this change, as it permits late Director Review requests for IPR institution decisions when co-pending litigation outcomes create materially changed case circumstances.
In a precedential sua sponte decision, USPTO Director Squires vacated three PTAB inter partes review (IPR) institution decisions nearly six months post-institution, after a co-pending district court found all challenged claims invalid under 35 U.S.C. § 101. The PTAB had previously denied a motion to terminate the IPR, citing no authority to end proceedings for discretionary reasons. The Director first extended the standard 14-day deadline to request Director Review of institution decisions to 30 days, aligning it with deadlines for other Director Review requests. He also established that “exceptional circumstances” — including co-pending claim dismissals, invalidity findings, or Sotera stipulation violations — allow further deadline extensions, provided trial has not meaningfully progressed. The § 101 invalidity finding qualified as an exceptional circumstance here, leading the Director to vacate the institution decisions and terminate the IPR.