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ARTICLE · 12 AUGUST 2025

USPTO Tightens Rules For Inter Partes Review Petitions

Jeffer Mangels & Mitchell LLP
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The U.S. Patent and Trademark Office issued a significant policy shift on July 31, 2025, announcing it will strictly enforce a procedural rule that has been loosely applied for years, potentially making it harder...

United StatesIntellectual Property
Jeffer Mangels & Mitchell LLP
Jeffer Mangels & Mitchell LLP
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The U.S. Patent and Trademark Office issued a significant policy shift on July 31, 2025, announcing it will strictly enforce a procedural rule that has been loosely applied for years, potentially making it harder for challengers to invalidate patents through inter partes review (IPR) proceedings.

Key Policy Change

The USPTO will now strictly enforce 37 C.F.R. § 42.104(b)(4), which requires IPR petitions to "specify where each element of the claim is found in the prior art patents or printed publications relied upon." This marks a dramatic departure from the agency's previous practice of waiving this requirement. As Acting USPTO Director Coke Morgan Stewart explained in the memorandum, "enforcement of Rule 104(b)(4) means that applicant admitted prior art (AAPA), expert testimony, common sense, and other evidence that is not 'prior art consisting of patents or printed publications' (collectively, 'general knowledge') may not be used to supply a missing

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