All post-grant proceedings at the United States Patent and Trademark Office (USPTO) start with the filing of a petition and progress through two general phases—a pre-institution phase and a post-institution phase. The USPTO's Patent Trial and Appeal Board (PTAB) must decide if the petition raises sufficient grounds to institute trial in view of any arguments submitted by the patent owner in a preliminary response. While the rate of institution varies by technology, in general, it ranges between 55% and 75% on a per-claim basis. In 2016, institution rates continued to decline compared to the lifetime average.
If the PTAB determines the petition warrants institution, it issues a written institution decision and initiates trial. At the conclusion of trial, the PTAB issues a final written decision. To date inter partes review (IPR), covered business method (CBM), and post-grant review (PGR) proceedings have strongly favored petitioners at the expense of patent owners. While survival rates increased over the course of 2016, this still paints a challenging picture for patent owners. In this article, Finnegan attorneys Joshua L. Goldberg, Daniel F. Klodowski, and David C. Seastrunk analyze post-grant proceeding statistics from 2016.