Insights —

Recent AIA Post-Grant Proceeding Filing Statistics

May 11, 2014

The numbers of filed AIA post-grant proceedings, including Inter Partes review (IPR), Post-grant Review (PGR), and Covered Business Method (CBM), exceeds the numbers originally anticipated by Congress.  For example, Congress originally envisioned less than 300 such filings per year, but nearly 1000 IPR petitions have been filed to date.  A yearly breakdown of the IPR filings, i.e., 2012 – 17; 2013 – 514; 2014 – 393, indicates that the popularity of these post-grant proceedings is growing.

The popularity of AIA post-grant proceedings may be based upon a number of reasons, including the speed at which such proceedings are processed.  For example, AIA post-grant proceedings challenging patents before the PTAB must be concluded within 12 months of a trial order; however, 18 months is allowed in exceptional cases.  This schedule is contrasted with prior reexamination procedures, which could take five or six years with appeal.  Many district courts had been hesitant to stay litigation for five or six years until reexamination procedures were concluded, but AIA post-grant proceedings are not subject to these delays.

However, tactical decisions for pursuing such AIA post-grant proceedings remain subject to their applicability.  For example, Inter Partes Review (IPR), which is most similar to the previous reexamination procedures, has been available since September 16, 2012, but can only be used to challenge patents based on prior art patents and printed publications.  Any third party can file an IPR who:  1) has not filed a complaint in federal district court challenging the patent’s validity, 2) has not been the recipient of a complaint for infringement of the patent, or 3) is not otherwise estopped.

Contrarily, Post-Grant Review (PGR), the procedures of which are similar to those of IPR, is applicable to:  1) any business method patent that is eligible for CBM, or 2) any patent that includes at least one claim with an earliest effective filing date on or after March 16, 2013, or continuations thereof.  PGR remains applicable in many situations in which IPR is excluded.  For example, any type of prior art supporting a new anticipation for obviousness based ground of rejection can be used in PGR, and third parties who have been the recipient of a complaint for infringement of the patent at issue are not barred from pursuing PGR.