Discretionary Denials of Patents by the Patent Trial and Appeal Board May Wane Under Proposed Rule

Matthew Chivvis and Chelsea Kehrer authored an article for the Daily Journal discussing Patent Trial and Appeal Board (PTAB) proceedings in the life sciences context, and the U.S. Patent and Trademark Office’s proposal of a new rule that could be likely to reduce the frequency with which the PTAB utilizes discretionary denials.

“Initially, there was some skepticism about whether companies litigating life sciences disputes would avail themselves of the venue,” the authors wrote. “But by 2015, the annual number of IPR [inter partes review] and PGR [post-grant review] petitions in life sciences exceeded 200, over half of which were eventually instituted. The trend peaked in 2017 with 251 petitions challenging the validity of life sciences patents. Since then, petitions have leveled off at about 80 to 100 petitions per year. Although the overall number of institutions has declined due to this downward trend in filings, the ratio of grants to denials has remained fairly constant from 2015 to 2022 at slightly better than 50%. That ratio is significantly lower than the institution rate in other technologies, and if the first quarter of this year is any guide, the institution rate in life sciences is going down. So far, the PTAB has only instituted 11 petitions compared to denying 15 petitions, but that may change given how such petitions are denied.”

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