USPTO Inter Partes Patent Challenge Statistics Remain Consistent

With two full years of Inter Partes Review (IPR) proceedings on the books, we now have an adequate sample of decisions—158 through 9/26/14. While most IPR decisions are still pending appeal, the results are consistent with earlier inter partes reexamination outcomes

As of September 2013, 696 inter partes reexamination certificates had been issued. (Not even half of the 1919 such proceedings pursued over the thirteen year history of the now defunct, never ending, reexamination option). 

Of the 696 inter partes reexamination certificates printed by September 2013, the results indicate:

Total Inter partes reexamination certificates issued (1999 – 9/13) ........... (373)

  1. Certificates with all claims confirmed (44) ..............................................12%
  2. Certificates with all claims canceled (or disclaimed) (169) .....................45%
  3. Certificates with claims changes (160) ...................................................43%

That is, ALL claims were cancelled in 45% of inter partes reexamination cases. Complete patentee victories (all claims confirmed w/o amendment) was relatively uncommon at 12%. 

With IPR decisions approaching the 200 mark, it is not surprising to see the same general results as to complete cancellations and confirmation. The primary differences in statistics of the two systems is the number of concluded IPR proceedings with claim changes. 

For IPR, the results to date are not much different. That is, ALL claims are cancelled in 53% of cases, ALL claims being confirmed in only 10% of cases. Given the speed of IPR, a surprising number of claims are cancelled by operation of patentees requesting adverse judgment. It remains to be seen if this anomaly will persist going forward. As noted above, with amendments being a rare occurrence in IPR, the absence of decisions issuing with some claim changes is the main difference between the outcomes of the old and new inter partes systems.

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