Patent Office Restores Real Party Identification Requirement
John Squires, the director of the US Patent and Trademark Office (USPTO), has sent a memo to all administrative patent judges (APJs) at the Patent Trial and Appeal Board (PTAB or Board) informing them that the USPTO was restoring the practice of requiring petitioners before the PTAB to identify all real parties in interest (RPI) before institution of proceedings.
As Chief Judge James Donald Smith, Board of Patent Appeals and Interferences, has noted
Who constitutes a real party in interest or privy is a highly fact-dependent question, especially on the issue of whether a party who is not a named participant in a given proceeding nonetheless constitutes a "real party in interest" or "privy" to that proceeding. Courts and commentators agree that there is no "bright-line test" for determining the necessary quantity or degree of participation to qualify as a "real party in interest" or "privy" based on the control concept. See Gonzalez v. Banco Cent. Corp., 27 F.3d 751, 759 (1st Cir. 1994); see also Wright & Miller § 44512 ("The measure of control by a nonparty that justifies preclusion cannot be defined rigidly."). Accordingly, the [Patent] Office has not enumerated particular factors regarding a "control" theory of "real party in interest" or "privy" in the proposed rules. Instead, to resolve a real party in interest or privy dispute that may arise during a proceeding, the Board plans to consider each case on its specific facts.
The USPTO’s director states in the recent memo that:
On September 26, 2025, I de-designated SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020), as precedential. Today, I am restoring the Office's pre-SharkNinja practice of requiring petitioners to identify the real parties in interest ("RPIs") to their petitions before institution by designating as precedential Corning Optical Communications RF, LLC v. PPC Broadband Inc., IPR2014-00440, Paper 68 (PTAB Aug. 18, 2015) ( except for § ILE. I).
As the director explains, the America Invents Act (AIA) provides that "A petition filed under section 311 may be considered only if... the petition [for inter partes review] identifies all real parties in interest." 35 U.S.C. § 312(a)(2).
As the USPTO explains,
Inter partes review is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. For first-inventor-to-file patents, inter partes review process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review. These deadlines do not apply to first-to-invent patents. The patent owner may file a preliminary response to the petition. An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months).
The director said in the memo that “The prevailing USPTO view prior to SharkNinja recognized that§ 312(a)(2) requires addressing properly raised issues about a petitioner's RPI identification.”
The director explained that
SharkNinja focused on the difficulty of determining the RPis in many cases, which is a legitimate policy concern. However, policy justifications alone do not provide an adequate reason for the Office to ignore the best reading of the statute.
The director referred to his recent statement to the US Senate and the Senate IP Subcommittee's hearing entitled "Foreign Threats to American Innovation and Economic Leadership," noting that
Opaque investment structures have been used by foreign adversaries to gain influence over, or access to, U.S. intellectual-property assets and proceedings. State-linked entities have covertly financed or directed U.S. patent challenges, acquisitions, or licensing transactions in sectors such as semiconductors, artificial intelligence, quantum computing, and advanced materials.
He said in the memo that
Entities identified by the Office of Foreign Assets Control (OFAC) and the U.S. Trade Representative (USTR) have been sanctioned or listed for activities including technology misappropriation and forced technology transfer. OFAC and USTR designations, coupled with publicly reported front-entity behavior, demonstrate that foreign state actors have sought to manipulate U.S. IP systems, including administrative challenges before the PTAB, to weaken or misappropriate U.S. technological leadership.
He asserted that
Since SharkNinja was decided, parties on the Department of Commerce "entity list," i.e., parties "involved in activities that are contrary to the national security or foreign policy interests of the United States" -- have filed a substantial and increasing number of lPRs. …
Congress also has expressed concern that one frequent petitioner could have been used by the Chinese government "to track the locations of Federal employees and contractors, build dossiers of personal information for blackmail, and conduct corporate espionage."
He said that
If just these petitioners, which already have been deemed a national security threat, were treated as a single entity, they collectively would be among the top 10 IPR petitioners for the period 2019-2024.
He asserted that
AIA proceedings should not be used by foreign adversaries to harass American patentees or otherwise provide an advantage to those that wish us ill. But the Office cannot address the misuse of AIA proceedings by foreign adversaries unless it requires parties to identify RPIs.
And he concluded:
Overall, the RPI requirement … functions not merely as a procedural safeguard, but as a national-security measure. The integrity of PTAB proceedings depends on knowing who is behind a petition -- who funds it, directs it, and/or benefits from it. Any opacity in that chain of control invites exploitation, may facilitate technology transfer contrary to U.S. law, regulation, and interests, and serves only to undermine public confidence in the integrity of the patent system. We will not have that at America's Innovation Agency.
