More than 1,000 petitions challenging patents in America Invents Act reviews were filed with the Patent Trial and Appeal Board by the midway point of this fiscal year, putting the board on pace to handle a potentially record-high number of petitions in 2017.
Statistics released by the U.S. Patent and Trademark Office this week show a total of 1,044 petitions requesting AIA reviews filed between October and March. If that pace holds, the total number of petitions would top 2,000 for the first time since the reviews became available in 2012.
Matt Cutler of Harness Dickey & Pierce PLC said he wasn’t surprised that PGRs weren’t exploding in popularity.
One perk of PGRs is that the program allows for a wider array of invalidity challenges compared with IPRs, where patents can be challenged only as anticipated or obvious citing printed publications. But it might be faster and cheaper for an accused infringer to raise some of those arguments, like that a patent is invalid for claiming only an abstract idea, in a motion in district court, Cutler said.
He also mentioned considerations regarding the PGR estoppel provision, which prevents petitioners from later raising in litigation any ground that was raised or “reasonably could have [been] raised” during the review.
“There’s such a limited subset of cases where that procedure makes sense,” Cutler said.