Patents Post-Grant: Examiner Claim Confirmations in Inter Partes Patent Reexamination, What Happens on Appeal?

How Often Are Examiner Claim Confirmations Upheld in Inter Partes Patent Reexamination

For challengers in an inter partes patent reexamination (IPX), confirmation of patent claims by the examiner can pose a significant set back. That is to say, the challenger would be estopped (35 U.S.C. § 317(b)) from raising invalidity defenses that "could have been raised" relative to the confirmed claims during the IPX proceeding, in a later court proceeding.

Although IPX is no longer available as an option to patent challengers, the rate of affirmance by the PTAB in such situations will still be of significant interest in the years to come thanks to the avalanche of IPX filings submitted to the USPTO earlier this month.

Based upon the outcomes of the IPX decisions issued so far in 2012, challengers have about a 50/50 chance of reversing at least one claim of the examiner confirmation.

The chart below illustrates the outcomes of  the 46 IPX decisions in which a claim was confirmed.

So far in 2012 there have been 46 IPX Board decisions where an appeal/cross-appeal concerned either the Examiner's confirmation of claims 40 or the Examiner's decision not to adopt additional rejections 6.

Of those cases, confirmed claims were:

-Affirmed in 16 - Affirmed in part in 10 - Reversed in 14

Additional rejections not adopted:

-Affirmed in all 6

Thus, of those 46 decisions, 24 resulted in the reversal of at least one confirmed claim (52%). (Click to Enlarge)

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