The surprising rise of the PTAB

A cover story in the September issue of Managing Intellectual Property magazine highlighted the surprising popularity of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). By the end of July 2014, the PTAB had been inundated with 1,763 petitions. Robert Greene Sterne estimates that there will be between 1,500 and 2,000 PTAB proceedings in 2014 alone, a figure four of five times what was originally expected.

Mr. Sterne reasons that the rapid increase in the popularity of IPR proceedings stems from the high invalidation rate of patent claims. Currently patent owners are facing a success rate of less than 50%, putting even the their best IP assets in danger. “That means that you can have the most valuable patent, which has been through the most unbelievable litigation scrutiny and survived, and it can be taken in front of this PTAB and on average you are going to see at least 50% of your claims go down,” said Mr. Sterne.

Despite the high rate of invalidation, Mr. Sterne believes the PTAB is reversing course slightly and finding an increasing number of claims valid. “I think that the Board is bending over backwards a little bit in certain cases to find claims patentable.”

The popularity of PTAB proceedings has implications for the federal circuit as PTAB decisions will likely be appealed. Mr. Sterne estimates that about 70 percent of PTAB proceedings will go to appeal. “We are going to see a huge overload at the Federal Circuit shortly,” said Mr. Sterne.