Since the introduction of the America Invents Act in 2013, the post grant review procedure has been in place in the USA. It is a two-sided dispute procedure that is conducted before special, newly installed Boards of Appeal of the Patent Office to review new objections to the patentability of granted Patents. How critical of patents are these boards? The latest statistics show that many US Patents do not stand up to invalidity attack.

In addition to Post Grant Review (PGR), the new chambers also conduct Cancellation Proceedings on Patents covering a non-patentable business method (“Covered Business Method”, CBM for short). The following statistics cover both PGR and CBM proceedings. However, since less than 10% of the decisions concern a CBM procedure, the statistics for PGR are meaningful.

In May 2016, the Boards issued 35 written decisions. Almost 75% of the contested claims were deleted. Only just over 16% of the granted claims were upheld. In the remaining 9%, the patent proprietor succeeded in averting the cancellation by limiting the claim.

We know from previous statistics that the rates for CBM are different from those for PGR. In the past, attacks in CBM proceedings have shown very high success rates of almost 90%. From this, it can be deduced that the invalidity rate in PGR proceedings, i.e. proceedings that do not concern Business Method Patents, is likely to be slightly below 75%. This means that the attacker in PGR proceedings was able to destroy the claim in ¾ of cases.

In the light of these statistics, the new chambers must therefore be classified as patent-critical. This is bad news for the patent proprietor. After all, he has put a lot of effort into getting his claims granted – possibly only after several examination decisions.

However, the above statistics are a balm for anyone who feels hampered by an unjustly granted US patent. He has a real chance that the patent will be critically reviewed.