PTAB ‘rapidly expanded’ discretion to deny to IPRs: Unified Patents
The Patent Trial and Appeal Board’s (PTAB) use of procedural denials has “exploded”, with the board rapidly expanding the exercise of its discretion in the past two years.
Unified Patents, an organisation which aims to deter non-practicing entities, released its findings on the PTAB’s institution rates, on Wednesday, May 13.
According to the organisation, the board’s inter partes review (IPR) institution rate has dropped every year since the launch of IPRs. So far from 2019, the institution rate is at 54%, as compared to above 80% in 2013, the first full year of the PTAB’s modern set-up.
A significant portion of the decrease is attributable to the board’s increase in procedural denials—the percentage of procedural denials as a percentage of all decisions has almost doubled from 2016 (5.2%) to 2019 (11.8%).
Unified Patents said that most of this increase in procedural denials comes from the board’s “rapid” expansion of the exercise of its discretion under 35 USC section 314(a).
Under this section, the PTAB must not institute an IPR unless it has determined the petition has a “reasonable likelihood” of prevailing.
“Using a raft of precedential opinions … and agency edicts, the board has implemented binding rules, the upshot of which dramatically limits the petitions the agency will institute,” said Unified Patents.
The organisation added that discretionary denials as a percentage of institution denials have risen dramatically, and are on pace to almost double again this year.
In 2016, five petitions were denied under the board’s section 314(a) authority. The following year it was 15; by 2018, it was 45; and in 2019, it was 75.
“What this makes clear is that the multiple precedential Board orders focusing only on the behavior of the petitioner have had a clear and serious impact on filings—one would assume as they were intended to—and have lowered the overall institution rate as well as the denied otherwise meritorious petitions fair consideration before the agency,” said Unified Patents.
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