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The United States Patent and Trademark Office (the “USPTO”) has proposed a set of amendments to the rules that govern inter partes review (“IPR”) and post grant review (“PGR”) processes. The USPTO has presented these amendments as being directed to constraining abusive practices that are used to attack granted patents. One of the problematic practices which the USPTO claims will be limited by these amendments are parallel or serial proceedings. Some other amendments are directed towards giving the USPTO greater or clearer discretion to refuse to institute IPR and PGR proceedings attacking patents owned by small entities.

Some commentators have taken the position that the proposed amendments are harmful in that they will reduce the availability of IPR and PGR proceedings to attack invalid patents. For example, the Electronic Frontier Foundation has asserted that the proposed amendments will benefit patent trolls.

The proposed amendments have been published to allow for comment by interested members of the public. Comments must be received by June 20, 2023 to be considered in this round of consultations.

A full copy of the amendments and details for how to provide comments can be found here: https://www.federalregister.gov/documents/2023/04/21/2023-08239/changes-under-consideration-to-discretionary-institution-practices-petition-word-count-limits-and

The Electronic Frontier Foundation’s commentary on the proposed amendments can be found here: https://www.eff.org/deeplinks/2023/06/our-right-challenge-junk-patents-under-threat

Some further commentary on the proposed amendments can be found here: https://ipwatchdog.com/2023/06/01/iancu-agrees-key-uspto-anprm-proposals-handled-congress/id=161781/

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