USPTO releases updated study of multiple petitions for AIA proceedings at the PTAB
The United States Patent and Trademark Office (USPTO) today published an updated study analyzing the filing of multiple petitions under the America Invents Act (AIA) at the Patent Trial and Appeal Board (PTAB). The study analyzed the frequency and effectiveness of multiple petitions filed by the same petitioner against the same patent during fiscal years 2015 through 2022. Specifically, the study looked at serial petitions (filed more than 90 days after a first petition) and parallel petitions (filed 90 days or fewer apart).
The USPTO has made clear that petitioners “cannot expect automatic acceptance of multiple petitions for consideration,” that although more than one petition by a petitioner “may be needed, . . . this should be rare.” The USPTO issued decisions and guidance in fiscal years 2016 through 2019 that were intended to strike a fair balance between the interests petitioners have in raising meritorious challenges when a single petition proves insufficient, and the interests patent holders have in enjoying the benefits of patent ownership without having to respond to challenges that are repetitive or raised inefficiently.
The updated study shows most patents are only challenged by a single petition, and after the USPTO issued guidance in this area, “petitioners have filed fewer multiple petitions, and the PTAB has instituted fewer AIA trials based on such petitions, and only under certain circumstances.”
For example, in fiscal year 2022, over 1,000 challenges were filed. Of those:
- 90% of all challenged patents involved only one or two petitions filed by any challenger, and 72% were challenged only once.
- 17 patents (1.7% of all challenges) involved serial petitions filed by the same petitioner; of those only three (0.3% of all challenges) led to institution based on a serial petition.
- 76 patents (about 7.5% of all challenges) involved a parallel petition attempt by the same petitioner; of those, 35 attempts (3.4% of all challenges) led to institution on parallel petitions.
By comparison, in fiscal year 2015, there were 99 patents with a serial petition attempt (9% of all patent challenges by a petitioner), of which 42 attempts (3.8% of all patent challenges by a petitioner) led to institution based on a serial petition. In fiscal year 2019, there were 206 challenges (about 20% of all patent challenges by a petitioner) with a parallel petition attempt, of which 112 (about 11% of all patent challenges by a petitioner) led to institutions on parallel petitions.
An executive summary and a slide deck appendix presenting the results of the study are also available for download.
The USPTO will use the results of this study, other PTAB statistics, and stakeholder feedback to help inform important reforms we are currently considering.
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