Views from the Director's Office on Post-Grant Reviews by the PTAB

By Kevin E. Noonan --

Director of the U.S. Patent and Trademark Office and Under Secretary of Commerce Michelle Lee took the occasion of the release of the revised PTAB Guidances last Thursday to provide the patent community with some statistics regarding the post-grant procedures established by the Leahy-Smith America Invents Act.  These statistics, regarding inter partes review (or IPRs), covered business method patent reviews (CBM), and post-grant review (PGR), limited to patents granted under the "first inventor to file" provisions of the AIA make interesting if not completely transparent reading.

First, the overall statistics.  There have been 3,277 IPR petitions, 368 CBM petitions, and 10 PGR petitions filed since the provisions were implemented.  Of these, 63% were in patents issued from the electrical/computer art units, 23% mechanical/business methods art units, 9% bio/pharma art units and 5% chemical art units.  There have been 1,389 IPRs, 185 CBMs, and 2 PGRs granted during this initial three-year period, which seems to indicate that the grant rate for IPRs at least has dropped considerably since these procedures were first available (there having been an 80-90% grant rate at first, to the current overall grant rate of 42%).  Also, the grant rate of about 50% for CBM petitions also seems low in view of the targeted way these petitions are brought (i.e., the AIA included a standing requirement for CBMs that limited petitioners to those accused of infringement).

Director Lee notes on her blog that only a small percentage (12%) of claims found "challengeable" by the PTAB have been invalidated (4496/38642), but does not describe "[o]ther claims [that] were either not challenged, resolved by settlement, cancelled, or upheld as patentable"; overall, 25% of claims "actually" challenged were held unpatentable in IPRs.

Not surprisingly, the Director brags a little about how well the Office has done under the procedural constraints contained in the law:

Although the total number petitions filed to date reflect around three times more than what we initially anticipated, we are especially pleased that the PTAB has nonetheless maintained a perfect record in rendering all its final decisions within the mandated time frame of one year.  (And without using the six-month "good cause" extension for any trial or employing the temporary safety-valve "cap" provided by Congress to decline further petitions.)  We are also pleased that those final PTAB decisions that have been appealed to the U.S. Court of Appeals for the Federal Circuit (CAFC) have been affirmed at a very high rate.

The blog post also includes a link to slides from which this synopsis was made.

These slides include the number of petitions (by type and cumulative) filed each month) (click on slides to enlarge):

The decisions on petition for each type per year:

The number of settlements:

And the procedural history of the total IPR petitions completed to date:

The latter chart is particularly informative: of 1,777 IPR petitions "completed" by July 31st, 827 trials were instituted (46%).  Only 447 of these went through the trial, and of these 295 trials ended with all claims found unpatentable (66%), 81 with some claims unpatentable (18%), and 71 with no claims found unpatentable (16%).  The disposition of IPRs by claim is as follows:

According to the slides, these data (including the date in the Director's synopsis) are current to July 31, 2015.

Comments

[EG]

Hey Kevin,

Even using the USPTO's own statistics on IPRs, once the IPR is initiated, the assertion made by many that IPRs are "patent death squads" (wholly or at least partially) appears valid to me.

[VB]

Without delving into the particulars of each case it is hard to give broad brush assertions. However, what is interesting (to me, at least) is that almost 13% of the challenged claims were ultimately cancelled or disclaimed by the patent owner. I think that says a lot and strongly suggests the need for an enhanced prosecution option such as an EP opposition-type procedure.