No statute or rule establishes a time limit for the Board to decide a request for rehearing. However, the Trial Practice Guide states that the Board “envisions” that decisions will be made within approximately one month unless additional briefing is required. An analysis of recent decisions shows that the Board is not meeting this stated goal in most cases, even when no additional briefing is requested.
For this analysis, the 21 Board decisions on requests for rehearing that issued in the month of August 2016 were considered. Of these, sixteen were requests for rehearing of institution decisions and five were requests for rehearing of final written decisions. None of the requests resulted in a reversal of the Board’s earlier decision.
The chart below shows the length of time from request to decision for the 21 August decisions.
The average pendency of all the requests was 71 days from the date of the request to the date of the decision, with a median of 58 days and a range of 10 days to 204 days. Thus, the majority of requests are taking around two months or longer to decide, with some taking several months. The long-pending requests are not limited to any particular type of request: requests for rehearing of institution decisions (n=16) had a median pendency of 44.5 days and a range of 10 days to 204 days, while requests for rehearing of final written decisions (n=5) had a median pendency of 108 days and a range of 28 days to 160 days.
The long pendency of the requests cannot be explained by delays caused by additional briefing. None of the five requests that pended for more than 100 days involved additional briefing on the request. The two cases that did involve additional briefing pended for 58 and 70 days, respectively.
While these data represent only a snapshot, they do show that the Board is often missing its one-month goal, sometimes by several months.[1] This may indicate that the PTAB judges have heavy workloads and are giving priority to meeting statutory deadlines.
Based on these limited data, parties in post-grant proceedings can expect that a decision on a request for rehearing will probably take more than one month and may take several months. This is significant because it can cause a substantial delay in the ultimate resolution of an underlying patent dispute.
[1] Note that two of the six decisions on requests for rehearing decided between September 1 and September 14 pended for more than five months (169 days and 223 days).
