On June 30, 2016, lead APJ Jacqueline Wright Bonilla provided a status report on Inter Partes Review/Post Grant Review in the Biotechnology and Chemical Technology Center 1600 during the Biotechnology/Chemical/Pharmaceutical Customer Partnership (BCP) Conference. The statistics discussed during this BCP Conference are current as of May 31, 2016.
Since the first AIA petition filed in September 16, 2012, 5026 total AIA petitions have been filed, with 90% of these petitions being IPRs, 9% being CBMs and the rest being PGRs and derivation proceedings. It is expected that the number of PGRs will increase in the future as more patents issue with a priority date after March 15, 2013. The number of AIA petitions filed is 3 times higher than what the USPTO projected at the time the proceedings were created. Currently, 960 IPR petitions have been filed in FY 2016 and it is likely the final number of petitions filed will be similar to the number filed in FY 2014 (1310), which would be reduced from the number filed in FY 2015 (1737).
In the Biotech/Pharma field (1301 claims), about 37% of instituted claims were found unpatentable and 25% of claims were found to be patentable
In the Biotech/Pharm art unit (TC 1600), there has been an increase in the IPR petitions filed. In 2014, biotech/pharma filings were about 6% of all AIA petitions, and 9% of all AIA petitions in 2015. So far in 2016, biotech/pharma filings are 12% of all AIA petitions. However, the number of biotech/pharma IPR petitions being filed is small (164) compared to the large number (24,561) of patents that issued from TC 1600 in 2015. About 60% of biotech/pharma AIA petitions were instituted while the other 40% were either denied or settled before institution. There is a settlement rate of about 30% and about 15% were settled before the PTAB issued a decision on institution.
Of the 3114 total IPR petitions filed, about 51% of these petitions (1580) were instituted and proceeded to trial. Only 988 of the instituted IPRs resulted in a completed trial with a final written decision, and 592 of these petitions were terminated after institution. In 71% (704) of the complete trials, all of the instituted claims were determined to be unpatentable; while in 14% (142) of the completed trials some of the instituted claims were determined to be unpatentable and in 14% (142) of the completed trials all instituted claims were determined to be patentable. In the Biotech/Pharma field (1301 claims), about 37% of instituted claims were found unpatentable and 25% of claims were found to be patentable. The other 38% of claims were canceled or disclaimed by the patent owner during the proceeding or the trial was settled or dismissed before reaching a final decision.
Despite a 51% institution rate, AIA petitions in the biotech/pharma field continue to increase. Even though there is 50/50 chance the IPR will not be instituted, this institution rate is not deterring filing of IPR petitions and it is likely the number of petitions will continue to rise.