Resources

Post-Grant Report

Fish’s annual Post-Grant Report takes a deep dive into the cases, trends, and statistics that shaped post-grant practice over the previous year and how they will affect practitioners going forward.

SELECT YEAR:    2020  |  2019  |  2018  |  2017  |  2016  |  2015

February 7, 2022

2021 Post-Grant Report

After a heady 2020, 2021 proved to be a return to normalcy for the PTAB. While there was significant excitement early in the year about how the Supreme Court would rule in Arthrex, its decision in June mostly maintained the status quo. With the PTAB’s constitutional defect now cured, the post-grant world refocused its attention back to more typical matters – discretionary denial, institution reviewability, and the one-year time bar, among other issues. Filings at the PTAB in 2021 also reflect a general slowdown, with a decline of about 10% from 2020. Nevertheless, the PTAB remains the most active forum for patent disputes nationwide, handling significantly more matters in 2021 than both the Eastern and Western Districts of Texas and the District of Delaware.

January 28, 2021

2020 Post-Grant Report

Given the challenges of 2020 – a global pandemic, a deep economic recession, and a turbulent presidential election, among others – a slowdown in activity at the PTAB would not be unexpected. But a comparison of 2019 and 2020 statistics reveals that filings actually increased by about 15%, reversing a decline of about 30% between 2018 and 2019. The United States Patent and Trademark Office (USPTO) attributes this success to a two-year IT stabilization and modernization effort, which allowed the agency to transition 13,000 employees to remote work relatively seamlessly. The PTAB also became one of the first tribunals in the country to conduct virtual hearings, having held over 1,000 all-virtual hearings by year’s end.

January 21, 2020

2019 Post-Grant Report

The Patent Trial and Appeal Board (PTAB) remains the forum of choice for challenging the validity of patent claims. However, it is notable that a comparison of 2019 and 2018 statistics reveals about a 30 percent decline in filings. Under the guidance of its newly appointed chief judge, Scott Boalick, who assumed his new role in March 2019, the PTAB announced a new Pilot Program granting patent owners new options for motions to amend and a second update to the America Invents Act (AIA) Trial Practice Guide (TPG) relating to recent precedential decisions. Incidentally, 2019 also marked the eighth anniversary of the AIA. We saw important decisions from the Supreme Court in Return Mail—barring the federal government from initiating post-grant challenges—and from the United States Court of Appeals for the Federal Circuit in Arthrex, challenging the constitutionality of administrative patent judges.

January 15, 2019

2018 Post-Grant Report

2018 was a watershed year for post-grant practice. The Supreme Court of the United States and the Court of Appeals for the Federal Circuit issued several important decisions touching on a variety of topics, including the constitutionality of inter partes review (IPR) proceedings under Article III, real party in interest (RPI) and privity issues, partial institution decisions, and printed publications. The Supreme Court of the United States and the Court of Appeals for the Federal Circuit issued several important decisions touching on a variety of topics, including the constitutionality of inter partes review (IPR) proceedings under Article III, real party in interest (RPI) and privity issues, partial institution decisions, and printed publications. The Supreme Court of the United States and the Court of Appeals for the Federal Circuit issued several important decisions touching on a variety of topics, including the constitutionality of inter partes review (IPR) proceedings under Article III, real party in interest (RPI) and privity issues, partial institution decisions, and printed publications.

January 8, 2018

2017 Post-Grant Report

2017 was the busiest year at the Patent Trial and Appeal Board. The PTAB remains the forum of choice for challenging the validity of patent claims, surpassing the Eastern District of Texas as the #1 venue for patent disputes. 2017 also marked the fifth anniversary of the America Invents Act (AIA) and the first anniversary of the PTAB Bar Association. Fish’s 2017 Post-Grant Report examines significant case law and decisions before the PTAB and Federal Circuit, as well as trends and statistics from the past year. The report also reviews appeals/due process concerns and estoppel, and takes a closer look at the biopharma industry and its use of inter partes review (IPR) in patent disputes.

January 12, 2017

2016 Post-Grant Report

2016 marked the fourth anniversary of the America Invents Act (AIA). The Patent Trial and Appeal Board (PTAB) was once again the forum of choice for challenging patentability of claims, surpassing the Eastern District of Texas as the #1 venue for patent disputes. 2016 also marked the launch of the PTAB Bar Association, the first national bar association of its kind to form in more than 30 years. The PTAB Bar Association intends to establish best practices for the unique skills required to practice before the PTAB. More than 45 law firms joined to form the association, which will host its inaugural conference in 2017.

January 14, 2016

2015 Post-Grant Report

Since the enactment of the America Invents Act (AIA) in September 2012, post-grant proceedings have become an important part of litigation strategy, and in some instances are helping reduce the time and cost associated with litigation.