In August of 2012, the Federal Register published the Patent Office’s estimate of the number of AIA trial petitions the Office then expected to receive in each of the three succeeding fiscal years (each such year ends September 30). In October of 2015, the Patent Office published a report of the number of trial petitions it actually received during these fiscal years. The table below presents this same information:

Click here to view the table.

The Patent Office stated it based its estimate partially on the number of inter partes reexamination requests it received in its fiscal years 2010 and 2011, and the first half of 2012. Whatever might have been its complete bases, the Patent Office underestimated the number of AIA trial petitions it would receive.

During the same three fiscal years, the Federal Circuit docketed an increasing number of appeals of Patent Office decisions: 132 in 2013, 238 in 2014, and nearly 400 in 2015—a 200% increase during that three-year period. Not all of these are appeals of AIA trials. But, a substantial proportion of the increase is due to AIA trials. An appeal of a PTAB decision burdens not only the parties to the appeal, but also the Patent Office itself—particularly the Office of the Solicitor, which defends the PTAB’s decisions on appeal. Each appeal, of course, also places burdens on the Federal Circuit.

no one responsible for enacting the AIA or establishing the AIA trial rules appears to have accurately considered the burdens the Federal Circuit now faces in adjudicating appeals of the PTAB’s AIA trial decisions

The increase in Patent Office appeals during this period would be of little concern if the Federal Circuit received the same total number of appeals regarding patent issues from the Patent Office and district courts. But, the Federal Circuit received far more appeals regarding patent issues during this period from both the Patent Office (a 200% increase) and district courts (a 33% increase). Further, the court’s overall proportion of cases concerning patent issues also increased significantly, from 47% in 2012 to 62% in 2015. These trends will continue as additional aspects of the AIA become the subject of disputes in the Patent Office and district courts.

To date, the Federal Circuit has issued few precedential decisions in appeals of the PTAB’s AIA trial decisions. Among those, are decisions concluding that Congress limited the court’s jurisdiction to review certain such appeals. Its calendar of oral arguments shows about 30 oral arguments in Patent Office appeals in November and December alone. While we await the Federal Circuit’s scrutiny of the AIA and the PTAB’s AIA trial decisions, there is reason for concern that the court may not be able to handle the increased workload without disposing of appeals with summary affirmances accompanied by no written opinions.

The Patent Office can hire more attorneys, examiners, and administrative judges to staff its increasing workloads—workloads that are accompanied by the petition fees it collects for each petition filed. The Federal Circuit cannot, however, accommodate for its increased workloads in the same way. The active service judgeships at the Federal Circuit did not change with the AIA, and no one responsible for enacting the AIA or establishing the AIA trial rules appears to have accurately considered the burdens the Federal Circuit now faces in adjudicating appeals of the PTAB’s AIA trial decisions. We cannot reasonably expect Congress or the Patent Office to address the court’s burden. Thus, the Federal Circuit will have to bear it alone.