PTAB claim rejection rate for April lower than average: Finnegan
The Patent Trial and Appeal Board (PTAB) cancelled a smaller proportion of patent claims in April 2018 compared to the cumulative average rate as well as to the rate for March 2018, research from law firm Finnegan, Henderson, Farabow, Garrett & Dunner has shown.
In an update on Friday, June 1, Finnegan said that in April, the PTAB issued 41 final written decisions in inter partes review (IPR) and covered business method (CBM) proceedings, including rulings following remands from the US Court of Appeals for the Federal Circuit.
The PTAB cancelled 323 instituted claims (62.36%) while declining to cancel 195 (37.64%). According to Finnegan, the average rate of instituted claims cancelled in IPR and CBM final written decisions is around 75%, while the cancellation rate for March was 83.33%.
For April 2017, the year before, Finnegan’s statistics showed that the cancellation rate was 86.11%—again, higher than this year’s 62.36%—but the firm did not clarify at the time whether those data also included decisions on Federal Circuit remands.
The most recent statistics revealed that on a per-case basis, no instituted or substitute claims survived in 21 decisions (51.22%), all instituted claims survived in 15 rulings (36.59%), and a mixed outcome occurred in 5 (12.20%).
“A mixed outcome occurs where at least one instituted or substitute claim remains patentable, and at least one is cancelled, in a final written decision,” the law firm clarified.
Finnegan also provided cumulative data on how different industries have fared in IPR and CBM final decisions to date. As of May 1, the claim survival rate is highest for the biotech and organic chemicals industry, at nearly 50%; at the other end of the scale, the transportation and e-commerce sector has a survival rate of just 15.30%.
The IPR has come under much scrutiny this year, with the US Supreme Court issuing two decisions in April.
In Oil States Energy Services v Greene’s Energy Group, the court found the IPR process to be constitutional and said the PTAB does have the authority to invalidate patents, despite a challenge from Oil States, a provider of services to oil and gas companies.
On the same day, April 24, the court ruled in the separate matter of SAS Institute v Iancu that the PTAB cannot choose to review only some challenged claims in an IPR—it must assess them all.
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