Playing the Numbers Game on U.S. Patent Office Appeals and TrialsAugust 29, 2019

Numbers don’t always tell the story, but they can provide interesting highlights. The United States Patent & Trademark Office (USPTO) tracks various statistics of patent appeals and trials. The mid-year statistics in 2019 provide an interesting look at the direction of the USPTO. Appeal results remain largely the same, with a longer look at trial outcome.

In fiscal year 2019, the pendency of time to a decision from the appeal board has gone up in the electrical and computer technologies by about four to five months. Across four of those art units, it increased from about 10 months to up to 15 months for time to a decision on appeal. Time to decision has dropped two months in the bio/pharma technologies from 15.5 months in fiscal year 2018 to 13.5 months in 2019. Business method/mechanical fields have dropped from 18.1 months to 17 months in art unit 3600 and from 15.6 months to 14.2 months in art unit 3700. Design patent time for appeal decision dropped from 18 months to 14.8 months.

While time for a decision in the technologies other than electrical and computer has dropped, the outcomes have stayed the same, with the majority siding with the examiner. In fiscal year 2019, 58% of all decisions on appeal affirmed the examiner. The examiner has been reversed in 30.9% of the decisions and affirmed-in-part 9.1% of the time. This is much like fiscal year 2018 statistics, with 60% of examiner decisions affirmed, 27.9% reversed, and 10.3% affirmed-in-part.

In trial statistics before the Patent Trial and Appeal Board, the Office reviews the numbers on Inter Parties Review (IPR), Post Grant Review (PGR) and Covered Business Method (CBM) challenges. IPR has been around longer, with PGR applying only to patents filed under the new AIA law. In fact, PGR represents only 2% of all trial type petitions since 2012 to July 31, 2019, where IPR represents 93% of such filings and CBR represents 5% of such filings.

From October 1, 2018 – July 31, 2019, 64% of petitions were in the electrical and computer field; 24% in mechanical and business method technologies; 9% in bio/pharma; and 3% in chemical technology.

Since 2012, about half of all petitions were instituted, with about 13% settled and just under one-third decided with a final written decision. Of those, in 63% of such decisions, all claims were found unpatentable, some claims were found unpatentable in 18% of the decisions and no claim was found unpatentable in 20% of those decisions. Those numbers have dropped only slightly from the 65% unpatentability decision on all claims in the numbers ending last fiscal year.

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