In his recent responses to Questions for the Record (QFRs) following his Senate confirmation hearing, USPTOUnited States Patent and Trademark Office. See also PTO. Director-nominee John Squires reaffirmed the value of the Patent Trial and Appeal Board (PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.), specifically inter partes reviews (IPRs) and post-grant reviews (PGRs), which he said “have served their function as a faster and cheaper alternative to district court litigation.” This clarity is welcome for proponents of patent quality.
But Squires also expressed a desire to “explore the avenues of redress” to achieve a more “normal distribution” between IPRs and PGRs, referencing the higher use of IPRs since the PTAB’s creation about 15 years ago. His view echoes a narrative being advanced by Acting Director Coke Morgan Stewart, who in recent weeks has been furiously denying IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. access for various novel and opaque discretionary reasons. Speaking at the IPBC Global 2025 Conference on June 10th, Stewart said her goal is “to incentivize these early challenges [PGRs],” claiming that the current imbalance is not what the [America Invents Act (AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding.)] intended” and implying that challengers are deliberately “ignor[ing] issued patents until [they] are sued.”
This sentiment may seem reasonable on the surface. But simply substituting more PGRs for IPRs is not the easy solution that some seem to suggest. They are two distinct mechanisms which serve different functions, and their current utilization reflects that.
Consider a business that wants to avoid long and expensive litigation concerning patents of questionable validity. Most companies don’t have the resources and expertise to devote legal teams to tracking the tens of thousands of newly issued patents each month, requesting PGRs for any patent that might hypothetically be used to sue them in the future. Businesses and inventors learn about questionable patents the hard way—when they are sued. At that point, it can file an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. to challenge specific claims of that specific patent. While it can be expensive—though less so than litigation!—this process is straightforward enough.
What Stewart and Squires are suggesting when they call for “normalizing the distribution” is that this same business should instead somehow identify and challenge every potential future threat to its technology in advance. That could mean filing 10, 20, or even 50 PGRs instead of one IPR—an enormous and speculative investment for a company that hasn’t even been sued, and one that would overwhelm the Patent Office to boot.
It’s a Bad Idea for the PTO Too
Think about it. The USPTOUnited States Patent and Trademark Office. See also PTO. currently receives around 1,300 IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. petitions per year (down from a high of approximately 1,700 in 2019, prior to the creation of Fintiv.) But the vast, vast majority of those are filed after the petitioner has been sued—and thus knows what patents they’re accused of infringing.
When doing a freedom-to-operate clearance opinion, I would regularly identify 20 to 50 times as many patents (if not more) as being of potential relevance compared to the number I would ultimately determine needed a formal opinion. If the Acting Director’s rule had been in place at the time, the only ethical advice I could have given my client would be to consider filing IPRs on all of them. If even a quarter of clients took that advice, the USPTOUnited States Patent and Trademark Office. See also PTO. might experience a tenfold increase in petition activity—15,000 petitions per year instead of 1,300.
Then add in the fact that, in PGR, a company can actually bring more complex challenges than in IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.. These proceedings are actually less efficient and streamlined because of that, meaning they impose more burden trial-for-trial compared to IPRs. The USPTOUnited States Patent and Trademark Office. See also PTO. lacks the resources, both human and monetary, to absorb that big of an increase in trials.
(That sets aside the simple fact that there probably aren’t enough IP lawyers in America to handle that many AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding. trials, whether IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. or PGR.)
The Normalization Argument Misunderstands Litigation
To imply companies are “lying in wait” when they wait to file an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. until sued fundamentally misunderstands how they operate. Businesses, particularly smaller ones in non-IP intensive industries, respond to these threats in real time, they are not trying to game the system. As a practicing patent attorney, Mr. Squires should be well aware of this fact.
The authors of the AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding. also understood this, and that’s why they created PGRs, not as a litigation defense mechanism, but as an extension of the examination process, wherein a different group of challengers—usually researchers, academics, and technical experts—can identify any relevant prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. to spot problematic patents shortly after issuance. (That’s also why PGRs permit broader challenges, such as subject matter or formalities challenges.)
If the USPTOUnited States Patent and Trademark Office. See also PTO. wants to encourage more PGRs, it could start by subsidizing filing fees for these academics and researchers, not by arbitrarily reducing the number of IPRs being granted through discretionary denials. Even so, it must recognize that scaling up PGRs will only exacerbate the very resource and staffing constraints the Acting Director is so worried about.
PGRs and IPRs are both valuable tools in their own right, but treating them as interchangeable, or pitting them against one another in a zero-sum framework, only undermines the strengths of both. Squires would do well to resist this false equivalence. IPRs and PGRs are complementary—not competitive—tools in the patent quality arsenal. The system works best when each is used for the role Congress intended.
