Today the United States Patent and Trademark Office (USPTO) issued proposed improvements to the rules governing trial practice in post-patent issuance proceedings before the Patent Trial and Appeal Board (PTAB).  With the proposed improvements (which are set forth in the Federal Register Notice), the USPTO shared key statistics summarizing the activity before the PTAB in the three years since the America Invents Act (AIA) created three new post-issuance review proceedings: inter partes review (IPR), post-grant review (PGR) and transitional post-grant review for covered business method patents (CBM).

The proposed rules address public comments directed to the several trial issues, including the claim construction standard for AIA trials, a new option to submit testimonial/expert evidence with a patent owner’s preliminary opposition to a petition to institute a new proceeding, and a Rule 11 type certification for all PTAB filings to police misconduct.

The Director of the USPTO, Michelle K. Lee, highlighted the following PTAB statistics on her blog:

  • As of July 31, 2015, the PTAB has received a total of 3,655 petitions, of which 3,277 are IPRs, 368 are CBMs, and 10 are PGRs.
  • Of all of the AIA petitions filed so far, 63 percent were filed directed to electrical/computer technology, 23 percent to mechanical/business methods subject matter, 9 percent in bio/pharma, and 5 percent in the chemical field.
  • Trials have been instituted on 1,389 of 3,277 IPR petitions, 185 of 368 CBM petitions, and 2 of 10 PGR petitions.
  • Of the first IPRs to reach a conclusion, 12 percent of total claims available to be challenged (4,496 of 38,462), were determined by the PTAB to be unpatentable in a final written decision. Other claims were either not challenged, resolved by settlement, cancelled, or upheld as patentable.  Of the first IPRs to reach a conclusion, 25 percent of claims actually challenged (4,496 of 17,675) were found to be unpatentable.

Director Lee noted that the total number of petitions filed to date is approximately three times more than what was anticipated.  Despite the unexpected volume, the PTAB has rendered final decisions within the required one year time period in all of the cases.

A more thorough and in-depth review will follow once the proposed rules are finalized.