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How Long Before My PTAB Trial Is Instituted?

Posted On: Apr. 4, 2013   By: Scott A. McKeown
ptoThe PTAB Has Instituted 34 IPR Proceedings to Date

Since September 16th 2012, the USPTO has received roughly 207 petitions for patentability trials of the America Invents Act (AIA) 11 CBMs and 190 IPRs. These proceedings must, by statute, be completed within 12 months (exceptional cases may be extended to 18 for good cause). Of course, this 12 month time frame applies to the trial proceeding, which begins upon issuance of an Order instituting trial. In order to gauge the complete USPTO processing time for conducting an IPR/CBM to a written decision it is also necessary to consider the preliminary proceeding.

The preliminary proceeding begins upon filing of the petition. Three months thereafter the Patent Owner has the opportunity to file a preliminary response. Once this response is entered, the USPTO has three months, by statute, to Order trial. As can be appreciated this “front end” or preliminary proceeding can span a maximumn of 6 months. Of the 34 trials Orders issued to date, the average time is hovering right around the 5 month mark.

As shown below for preliminary proceedings in which a preliminary response is filed in IPRs, the PTAB is issuing an Order around the 155 day mark. For those in which the preliminary response is waived, roughly one month sooner at 122 days. (Click to Enlarge)

IPR SimpleThese categories can be further broken down into cases where the preliminary response was affirmatively waived (3 cases) and those where the Patentee just did not file anything (2nd chart). Cases where no preliminary repsonse was filed, and no affirmative waiver received are averaging 171 days.

IPR front end

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