Statistics Show a Strong Interest in Challenging Patents at USPTO

The USPTO recently published updated statistics for filings under the AIA’s new post-grant procedures. As of November 2013, just 14 months after the new post grant challenges went into effect, the USPTO has received over 700 total petitions. The vast majority of them are for inter partes review (IPR), over 600 petitions, although there continues to be a steady filing of petitions for covered business method patents. Of note, 22 covered business method (CBM) reviews were filed in fiscal year 2014 alone. This is already about half of the total number of CBM requests filed for all of fiscal year 2013.

Over 70% of post grant challenges concern electrical/computer patents. Requests in mechanical fields are a distant second at only about 15% of the total filings. Requests for chemical and bio/pharma patents represent about 8% and 6% of the total filings, respectively. Interestingly, there have been 6 IPR petitions filed against design patents.

After a challenger files its petition for either an IPR or CBM, the patent owner has the option of filing a preliminary response for the Board to consider before deciding if it will institute a proceeding. Patent owners are filing preliminary responses to only about half of the IPR and CBM requests. In 82 cases, the patent owner waived its right to file a Preliminary Response, effectively expediting the proceeding.

So far, the Board has issued 256 decisions on whether or not to institute a trial. It has instituted a total of 210 trials, has denied 36 petitions, and has joined 10 petitions to other trials. Considering IPR and CBM petitions together, the Board is instituting trials about 85% of the time. For instituted trials, there have been 57 disposals, including 52 settlements, 2 requests for adverse judgment, 1 dismissal, and 2 written final decisions by the Board.

Additional statistical information about filings under these AIA provisions is available at: http://www.uspto.gov/ip/boards/bpai/stats/aia_statistics_11_07_2013.pdf.