U.S. PATENT AND 

TRADEMARK 

OFFICE

Assessment of the 

Covered Business 

Method Patent 

Review Program

Report to the Chairman, Committee on 

the Judiciary, House of Representatives

March 2018

GAO-18-320

United States Government Accountability Office
United States Government Accountability Office

Highlights of GAO-18-320, a report to the 

Chairman, Committee on the Judiciary, House 

of Representatives 

March 2018

U.S. PATENT AND TRADEMARK OFFICE

Assessment of the Covered Business Method Patent

Review Program 

Why GAO Did This Study

Patents can promote innovation by 

giving inventors exclusive rights to their 

inventions, and patent owners can 

bring infringement lawsuits against 

anyone who uses, makes, sells, offers 

to sell, or imports a patented invention 

without authorization. As GAO 

previously reported, such lawsuits can 

take years and cost several million 

dollars. USPTO’s CBM program 

provides a trial proceeding to challenge 

a patent’s validity at USPTO’s board 

for, according to stakeholders, a 

fraction of the time and money that 

would be spent in the federal courts. 

The CBM program began in

September 2012 and is slated to 

sunset in September 2020. 

GAO was asked to examine the CBM 

program. This report (1) describes the 

extent to which the program has been 

used to challenge patents, and the 

results of those challenges; 

(2) examines the extent to which 

USPTO ensures timeliness of trial 

decisions, reviews decisions for 

consistency, and engages with 

stakeholders to improve proceedings 

for the program; and (3) discusses 

stakeholder views on the effects of the 

program and whether it should be 

extended past its sunset date. GAO 

analyzed CBM trial data from 

September 2012 through September 

2017, reviewed USPTO documents,

and interviewed 38 stakeholders, such 

as legal and academic commentators,

selected for their knowledge of or 

direct involvement in such trials. 

What GAO Recommends

GAO recommends that USPTO

develop guidance, such as 

documented procedures, for reviewing 

trial decisions for consistency. USPTO

agreed with GAO’s recommendation. 

What GAO Found

From September 2012 through September 2017, entities facing patent 

infringement lawsuits filed 524 petitions challenging the validity of 359 patents 

under the U.S. Patent and Trademark Office’s (USPTO) covered business 

method (CBM) program, resulting in decisions against about one-third of these 

patents. The CBM program provides entities facing infringement lawsuits an 

opportunity to challenge the validity of a business method patent by 

demonstrating that it did not meet requirements for patentability. Business 

method patents focus on ways of doing business in areas such as banking or ecommerce. The rate of filing petitions over this period has fluctuated but has 

generally declined since 2015, and none were filed in August or September 

2017.

Number of Petitions Filed per Month Challenging Business Method Patents at the U.S. Patent 

and Trademark Office, September 2012 through September 2017

USPTO has taken several steps to ensure the timeliness of trial decisions, review 

past decisions, and engage with stakeholders to improve proceedings under the 

program: 

• Timeliness: USPTO regularly informs relevant parties about paperwork

requirements and due dates throughout trials. According to program

data, as of September 2017, all 181 completed trials were completed

within statutorily required time frames.

• Decision review: USPTO has taken several steps to review its

decisions and has monitored the rate at which the Court of Appeals for

the Federal Circuit affirms or reverses them. However, USPTO does not

have guidance, such as documented procedures, for reviewing trial

decisions, or the processes leading to decisions, for consistency. Without

guidance, such as documented procedures, USPTO cannot fully ensure

that it is meeting its objective of ensuring consistency of decisions.

• Stakeholder engagement: USPTO judges have engaged with

stakeholders by participating in public roundtables and webinars, and

attending judicial conferences, among other things.

Stakeholders GAO interviewed generally agreed that the CBM program has 

reduced lawsuits involving business method patents in the federal courts. While 

many stakeholders favored maintaining aspects of the program, there was not 

strong consensus among stakeholders for how future trials should be designed. 

View GAO-18-320. For more information, 

contact John Neumann at (202) 512-3841 or 

neumannj@gao.gov. 
Page i GAO-18-320 U.S. Patent And Trademark Office

Letter 1

Background 5

More Than 350 Patents Have Been Challenged under the CBM 

Program, and About One-Third of These Patents Were Ruled 

Unpatentable 17

The Board Met Timeliness Requirements and Has Taken Steps to 

Analyze Decisions and Improve Proceedings but Does Not 

Have Guidance to Ensure Decision Consistency 27

Stakeholders Agree the CBM Program Has Reduced Litigation, 

and Many See Value in Maintaining Aspects of the Program 34

Conclusions 41

Recommendation for Executive Action 42

Agency Comments 42

Appendix I Objectives, Scope, and Methodology 44

Appendix II Comments from the Department of Commerce 49

Appendix III GAO Contact and Staff Acknowledgments 51

Related GAO Products 52

Table

Table 1: Characteristics of the Patent Trial and Appeal Board’s 

Inter Partes Review, Post-Grant Review, and Covered 

Business Method Programs 12

Figures

Figure 1: Business-Method-Related Patents Granted Annually as 

a Percentage of All Patents Granted by the United States 

Patent and Trademark Office (USPTO), Calendar Years 

1990 through 2014 8

Figure 2: Patent Trial and Appeal Board Process and Timeline 15

Contents
Page ii GAO-18-320 U.S. Patent And Trademark Office

Figure 3: Number of Petitions Filed for Review under the Covered 

Business Method Program per Month, September 2012 

through September 2017 18

Figure 4: Percentage of Patents Challenged under the Covered 

Business Method Program That Were Challenged Once 

or in Multiple Proceedings, September 2012 through 

September 2017 21

Figure 5: Outcomes for Patents Challenged under the Covered 

Business Method Program for Petitions Filed, September 

2012 through September 2017 25

Figure 6: Covered Business Method Institution Decision 

Outcomes, Calendar Years 2012 through 2017 26

Abbreviations

AIA Leahy-Smith America Invents Act of 2011

CBM covered business method 

USPTO U.S. Patent and Trademark Office

This is a work of the U.S. government and is not subject to copyright protection in the 

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without further permission from GAO. However, because this work may contain 

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Page 1 GAO-18-320 U.S. Patent And Trademark Office

441 G St. N.W.

Washington, DC 20548

March 12, 2018 

The Honorable Bob Goodlatte

Chairman

Committee on the Judiciary

House of Representatives

Dear Mr. Chairman:

To promote the progress of science and useful arts, the Constitution 

grants Congress the power to provide inventors with exclusive rights to 

their inventions—in the form of patents—for a limited time.1 Congress has 

done so by enacting statutes governing the issuance of patents, which 

generally allow patent owners to exclude others from making, using, 

selling, or importing the patented invention for up to 20 years from the 

date on which the application for the patent was filed at the U.S. Patent 

and Trademark Office (USPTO). By restricting competition, patents allow 

their owners to earn greater profits on inventions than if the inventions 

could be freely imitated. USPTO receives hundreds of thousands of 

applications each year from inventors seeking patents. By law, before 

granting a patent, USPTO must determine whether a patent application 

meets patentability requirements for subject matter; novelty; nonobviousness; and clarity and specificity.2

Business methods—which are ways of doing business in areas such as 

e-commerce, insurance, banking, or stock trading—were generally 

thought to be unpatentable until a 1998 court ruling (State Street Bank).3

USPTO officials told us they saw a swift increase in the number of 

applications for business method patents after that ruling. In part because 

USPTO examiners were less trained in business methods, examiners 

issued some patents for business methods that did not meet the clarity 

and specificity requirements because they were insufficiently detailed to 

1

U.S. Const. art. 1, § 8, cl. 8. 

2

See 35 U.S.C. §§ 101, 102, 103, 112(a), 131. A patent application that is unclear or 

overly broad, for example, could be denied a patent under section 112(a) of title 35 of the 

United States Code.

3

The court found that the “business method exception”—which generally prevented 

business methods from being patented—represented a “no longer applicable legal 

principle that was...eliminated in the 1952 Patent Act.” See State St. Bank & Trust Co. v. 

Signature Fin. Grp, Inc., 149 F.3d 1368, 1375 (Fed. Cir. 1998).

Letter
Page 2 GAO-18-320 U.S. Patent And Trademark Office

enable someone to make and use the inventions. Examiners also issued 

some patents for technologies that were well known to people in the field, 

rather than for novel inventions. For example, the technologies for 

imaging, storage, and transmittal of financial data were in widespread use 

before two patents for these technologies were issued in June 1999 and 

February 2000 following the State Street Bank ruling. The owner of these 

two patents, DataTreasury, sued some of the nation’s largest banks for 

patent infringement. Many banks settled the lawsuits for undisclosed 

amounts and paid licensing fees to keep using these technologies rather 

than engage in what might have been a costly court battle. In one case, a 

federal judge ordered a bank to pay DataTreasury more than $53 million 

for willful infringement.4 In April 2015, one of the DataTreasury patents 

was ultimately ruled unpatentable by USPTO; the second was ruled 

unpatentable in September of that year. Those invalidity rulings were 

affirmed by the U.S. Court of Appeals for the Federal Circuit in October 

2016.

In the late 2000s, legal commentators, technology companies, and others 

began raising questions about whether the patent system was working 

well to promote innovation. In particular, questions were raised about an 

increase in the number of low-quality patents—those that should not have 

been granted because they do not meet the patentability requirements. 

Questions were also raised about the increase in patent infringement 

litigation, especially in the software and technology sectors.5 A common 

theme of such questions was whether this type of patent litigation was 

driven by patent owners asserting low-quality software and business 

method patents solely to force costly monetary settlements,6 which could 

pull resources away from research and development and other activities 

more closely aligned with innovation. In June 2016, we reported that the 

majority of defendants in patent infringement lawsuits between 2009 and 

 4

The case lasted 4 years, from 2006 through 2010, but when DataTreasury filed a 

subsequent infringement suit against the bank the following year, the parties reached a 

settlement agreement.

5

In August 2013, we found that almost 50 percent of the nearly 13,000 patent infringement 

lawsuits between 2007 and 2011 involved software-related patents. See GAO, Intellectual 

Property: Assessing Factors That Affect Patent Infringement Litigation Could Help 

Improve Patent Quality, GAO-13-465 (Washington, D.C.: Aug. 22, 2013).

6

In August 2013, we found that patent infringement lawsuits often settle before trial 

because parties want to avoid the high cost of litigation. See GAO-13-465.
Page 3 GAO-18-320 U.S. Patent And Trademark Office

2015 were accused of infringing software and business method patents.7

That report recommended USPTO take a number of steps aimed at 

improving patent quality, especially relative to software and business 

method patents.8 USPTO agreed with our recommendations and is 

working to address them.

In 2011, Congress passed the Leahy-Smith America Invents Act (AIA),9

which authorized three administrative proceedings for challenging an 

issued patent’s validity, including the Transitional Program for Covered 

Business Method Patents (CBM program).10 A “covered” business 

method patent is a patent that claims a method or corresponding 

apparatus for performing data processing or other operations used in the 

practice, administration, or management of a financial product or service. 

All three of the new administrative proceedings took effect in September 

2012, allowing entities facing patent infringement lawsuits an opportunity 

to demonstrate that the patents should not have been granted because 

they did not meet the requirements for patentability. The proceedings are 

held before administrative patent judges at USPTO’s Patent Trial and 

Appeal Board and, as reported by the House of Representatives 

Committee on the Judiciary, were intended to provide a more efficient and 

less costly alternative to district court for deciding patent validity. The 

CBM program is slated to sunset in September 2020.

You asked us to examine the CBM program. This report (1) describes the 

extent to which the CBM program has been used to challenge patents,

and the results of those challenges; (2) examines the extent to which 

USPTO ensures timeliness of trial decisions, reviews decisions for 

consistency, and engages with stakeholders to improve its administrative 

proceedings for the program; and (3) discusses stakeholder views on the 

 7

See GAO, Intellectual Property: Patent Office Should Define Quality, Reassess 

Incentives, and Improve Clarity, GAO-16-490 (Washington, D.C.: June 30, 2016).

8

For example, we recommended that the USPTO develop a consistent definition of patent 

quality, further develop performance measures related to patent quality, analyze the time 

examiners need to perform a thorough examination, and analyze how current 

performance incentives affect the extent to which examiners perform thorough 

examinations of patent applications. 

9

Pub. L. No. 112-29, 125 Stat 284 (2011).

10The two other administrative proceedings authorized by the AIA are the post-grant 

review program and the inter partes review program. These proceedings are discussed 

later in this report. 
Page 4 GAO-18-320 U.S. Patent And Trademark Office

effects of the CBM program and whether it should be extended past its 

scheduled September 2020 sunset date.

To describe the extent to which the CBM program has been used to 

challenge patents, and the results of those challenges, we obtained data 

on board proceedings from RPX Corporation and Unified Patents. These 

data included information on all proceedings from September 2012 

through September 2017. We tested the quality of the data, interviewed 

relevant officials, and reviewed relevant documentation for the data. We 

found the data to be sufficiently reliable to describe board petitions and 

their outcomes. To provide context for our findings, we compared the data 

for the CBM program with data for inter partes review, another type of 

administrative proceeding for challenging patent validity.

To examine the extent to which USPTO ensures timeliness of trial 

decisions, reviews decisions for consistency, and engages with 

stakeholders to improve its administrative proceedings for the program, 

we reviewed the AIA and USPTO documents and interviewed USPTO 

officials and stakeholders. We assessed USPTO’s efforts to review 

decisions for consistency against federal standards for internal control 

and USPTO’s current strategic plan.11

To obtain stakeholder views on the effects of the CBM program and 

whether it should be extended, we conducted semistructured interviews 

with 38 stakeholders knowledgeable about the CBM program. To identify 

these stakeholders, we first identified the following sets of stakeholder 

groups: board petitioners and patent owners, attorneys in board 

proceedings, technology trade groups, public interest groups, legal and 

academic commentators, and venture capitalists. We then selected 

knowledgeable stakeholders based on a set of criteria we developed for 

each group. For example, we selected petitioners who challenged 

multiple patent owners using the CBM program, petitioners who had used 

other review programs heard by the board, and petitioners from a range 

of industries such as banks, other financial institutions, and technology 

companies. We selected patent owners who had experience defending 

more than one patent using the CBM program or who had defended a 

patent in more than one challenge, and patent owners of different types: 

 11GAO, Standards for Internal Control in the Federal Government, GAO-14-704G 

(Washington, D.C.: September 2014) and USPTO, Strategic Plan, 2014–2018

(Alexandria, Virginia). 
Page 5 GAO-18-320 U.S. Patent And Trademark Office

individual inventors, operating companies, and non-practicing entities.12

The selected stakeholders did not form a random, statistically 

representative sample of all relevant stakeholders, so we cannot 

generalize the results of the interviews to the relevant total population, but 

the stakeholders did provide a broad spectrum of opinions on the CBM 

program. We identified key themes and sub-themes from the stakeholder 

interviews by using qualitative analysis software to group the responses. 

We then analyzed and categorized the themes to draw inferences about 

the CBM program by examining the amount and nature of agreement and 

disagreement between stakeholder responses and by assessing the 

strength of the arguments supporting each response. We also considered 

the way in which stakeholders’ interests could influence their responses. 

In addition, we analyzed data from RPX Corporation on patent 

infringement lawsuits filed in all 94 federal district courts from January 

2007 through June 2017. To assess the reliability of these data, we 

electronically and manually tested these data for reasonableness and 

interviewed knowledgeable officials, and we found these data to be 

sufficiently reliable to allow us to identify trends in patent litigation over a 

period from 5 years before the Patent Trial and Appeal Board 

proceedings began to 5 years after their implementation. Appendix I 

provides more detail on our scope and methodology.

We conducted this performance audit from November 2016 to February 

2018 in accordance with generally accepted government auditing 

standards. Those standards require that we plan and perform the audit to 

obtain sufficient and appropriate evidence to provide a reasonable basis 

for our findings and conclusions based on our audit objectives. We 

believe that the evidence obtained provides a reasonable basis for our 

findings and conclusions based on our audit objectives.

This section provides an overview of patenting in the United States, 

patent infringement litigation, and administrative proceedings for patent 

validity challenges. It also includes a brief history of court decisions that 

clarified eligibility requirements for the Patent Trial and Appeal Board’s 

CBM program. See “Related GAO Products” at the end of this report for a 

list of our prior work related to patents and intellectual property.

 12Operating companies produce products related to their patents. Non-practicing entities 

develop technologies and then license their patents to other companies. Some nonpracticing entities simply buy patents from others for the purpose of asserting them for 

profit.

Background
Page 6 GAO-18-320 U.S. Patent And Trademark Office

In the United States, patents may be granted by USPTO for any new and 

useful process or machine, or any new and useful improvement on an 

existing process or machine, but there are some exceptions. Laws of 

nature,13 physical phenomena,14 and abstract ideas15 are not patentable. 

The U.S. Supreme Court and the U.S. Court of Appeals for the Federal 

Circuit have refined the boundaries of these exceptions over time, 

allowing some subject matter that was previously not patentable to 

become so. For example, U.S. Supreme Court decisions in the 1970s 

found mathematical formulas used by computers (i.e., software) were like 

laws of nature and therefore not patentable subject matter.16 However, a 

1981 Supreme Court decision overturned USPTO’s denial of a patent 

application for a mathematical formula and a programmed digital 

computer because, as a process, the claimed invention was patentable 

subject matter.17 Similarly, business methods were widely considered 

unpatentable subject matter until 1998, when the U.S. Court of Appeals 

for the Federal Circuit ruled in the State Street Bank decision that they 

were patentable.18 In 2014, however, the Supreme Court effectively 

limited the patentability of some business methods by ruling in Alice Corp. 

 13Mackay Radio & Tel. Co. v. Radio Corp., 306 U.S. 86, 94 (1939).

14Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127,130 (1948). 

15Le Roy v. Tatham, 55 U.S. 156, 175 (1852). 

16For example, Gottschalk v. Benson, 409 U.S. 63, 68 (1972) (finding a mathematical 

formula that had no substantial practical application except in connection with a digital 

computer was not patentable); Parker v. Flook, 437 U.S. 584, 594 (1978) (finding a 

method for updating alarm limits through computerized calculations was not patentable 

because the alarm limit is a number and the patent application was for a formula to 

compute it). 

17Diamond v. Diehr, 450 U.S. 175, 192 (1981) (finding a patent claim containing a 

mathematical formula that implements or applies that formula in a structure or process, 

which, when considered as a whole, is performing a function that the patent laws were 

designed to protect, is patentable). 

18State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1375 

(Fed. Cir.1998) (stating, “Since the 1952 Patent Act, business methods have been, and 

should have been, subject to the same legal requirements for patentability as applied to 

any other process or method”). 

Patenting in the United 

States
Page 7 GAO-18-320 U.S. Patent And Trademark Office

Pty. Ltd. v. CLS Bank Int’l that using a generic computer to implement an 

abstract idea is not patentable.

19

Traditionally, economic theory has held that intellectual property rights, 

such as those conferred by patents, can help encourage innovation and 

stimulate economic growth. Exclusive rights provided by patents, for 

example, can help patent owners recoup investments in technology and 

earn greater profits than if their patented technologies could be freely 

imitated. Moreover, to the extent that intellectual property rights 

encourage specialization, innovators may be more productive than they 

would be in the absence of patent laws. Because of complex trade-offs, 

however, some economists hold a more nuanced view of the potential for 

patents to promote innovation and increase productivity. By increasing

the cost of using technologies, for example, patents may discourage not 

only diffusion of these technologies but also cumulative innovation that 

uses such technologies to develop new technologies. In addition, 

attempts to quantify the effect of patents on economic growth often fail to 

account for the creation of useful knowledge outside the patent system. 

Furthermore, to the extent that innovation occurs in the absence of patent 

laws, the need for patents can vary across industries or over time. Some 

researchers have suggested that some patents are currently limiting 

innovation, especially in areas such as software and computer 

technologies that overlap with business methods.

USPTO receives hundreds of thousands of applications each year from 

inventors seeking patents to protect their work.20 According to USPTO 

data, applications for patents have increased in recent years, and the 

share of patents granted for business methods has significantly increased 

over the past 2 decades (see fig. 1). In calendar year 2014, patents 

related to business methods accounted for more than 28 percent of all 

issued patents.

 19Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347, 189 L.Ed. 2d 296 (2014) 

(finding that merely requiring generic computer implementation of an idea does not 

transform that abstract idea into a patent). 

20Since 2013, the number of patent applications per year has exceeded 600,000, 

according to USPTO data.
Page 8 GAO-18-320 U.S. Patent And Trademark Office

Figure 1: Business-Method-Related Patents Granted Annually as a Percentage of All Patents Granted by the United States 

Patent and Trademark Office (USPTO), Calendar Years 1990 through 2014

Note: Includes all patents issued through December 2014, the last full calendar year in which the U.S. 

Patent Classification was used to classify patented technologies. We considered a patent “business 

method related” if it was assigned to one of the patent classes that appears among the classes 

assigned to patents challenged under the Covered Business Method program through September 30, 

2017.

A patent’s claims define the legal boundaries of the invention, often in 

complex technical language. A patent application can be written to define 

an invention broadly or narrowly. Patent applicants often prefer broader 

claims because their competitors are less able to avoid infringement by 

making only small changes to their patented invention, as we reported in 

June 2016.21

Before issuing a patent, USPTO patent examiners determine whether 

claimed inventions in the application meet requirements for patentable 

subject matter, novelty, non-obviousness, and clarity—the four 

patentability grounds that are established by statute.22 Patent examiners 

assess whether the claimed invention consists of patentable subject 

 21GAO-16-490.

2235 U.S.C. §§ 101, 102, 103, 112(a), 131.
Page 9 GAO-18-320 U.S. Patent And Trademark Office

matter and also ensure that the claims are described clearly enough to 

enable a person skilled in the art to make the claimed invention. In 

addition, examiners determine whether a patent application’s claimed 

invention is novel and non-obvious by comparing the application’s content 

to “prior art”— existing patents and patent applications both in the United 

States and abroad, as well as non-patent literature such as scientific 

articles.23

In February 2015, USPTO launched an Enhanced Patent Quality 

Initiative, which included several proposals designed to improve the 

quality of patent examination and issued patents.24 However, we found in 

June 2016 that USPTO faced challenges in issuing patents in accordance 

with standards. For example, we found that a majority of examiners (67 

percent) said they have somewhat or much less time than needed to 

complete an examination, given a typical workload, and many examiners 

felt a time pressure that reduced their ability to conduct thorough 

searches. Examiners also said that it was difficult to issue patents that 

met the statutory requirements because of the limited availability of and 

access to non-patent prior art such as offers for sale and public use. 

Examiners said another limitation is their being responsible for 

examinations in subject areas in which they do not have adequate 

technical knowledge.25 We made seven recommendations to USPTO 

aimed at improving patent quality, clarity, and prior art search. USPTO 

agreed with the recommendations and is working to address them.

Patent owners can bring infringement lawsuits against anyone who uses, 

makes, sells, offers to sell, or imports the patented invention without 

authorization. Only a small percentage of patents in force are ever 

 23During the examination of a patent application, the applicant and the examiner 

communicate about the application, including aspects that might be deficient. For 

example, the examiner may inform the applicant that the claimed invention is not novel 

because of prior art, and the applicant might revise the claim to distinguish it from the prior 

art the examiner found. For more information on prior art and searching for prior art, see 

GAO-16-479.

24These steps include creating a new senior position, the Deputy Commissioner for Patent 

Quality, to provide a dedicated focus on patent quality efforts; the Clarity of the Record 

Pilot program, which created a list of best practices in clarifying the record of a patent’s 

examination and is currently monitoring treated cases; and the Clarity and Correctness 

Data Capture form, which allows USPTO to collect standardized, consistent data across 

all examinations. 

25GAO-16-479.

Patent Infringement 

Litigation
Page 10 GAO-18-320 U.S. Patent And Trademark Office

litigated, but some scholars believe that low-quality patents can make 

such litigation not only more complex and expensive but also more 

frequent. During an infringement case, the accused infringer may seek to 

have the lawsuit dismissed by showing the patent is invalid.26 When the 

courts rule on validity, they generally invalidate almost half of the patents, 

according to academic research.27

Exactly what a patent covers and whether another product infringes the 

patent’s claims are rarely easy questions to resolve in litigation, and 

defending a patent infringement lawsuit in district court can take years 

and cost millions of dollars, not including damages if infringement is 

found.28 Whatever the outcome, costly litigation can leave defendants 

with fewer resources for innovation. Consequently, patent infringement 

defendants often find it in their best interest to settle lawsuits quickly, as 

we reported in August 2013.29

The AIA in 2011 created the Patent Trial and Appeal Board and stated 

any references in federal law to USPTO’s then-existing Board of Patent 

Appeals and Interferences be deemed to refer to the new board. By 

statute, the Patent Trial and Appeal Board consists of the USPTO 

Director, Deputy Director, Commissioner for Patents, Commissioner for 

Trademarks, and administrative patent judges.30 In practice, to issue 

decisions in the matters that come before it, the board involves more than 

300 people serving in many positions, according to the board. The board 

is led by the Chief Judge and Deputy Chief Judge, who, along with other 

26In patent infringement lawsuits, the accused infringer often challenges the patent’s 

validity as an “affirmative defense,” meaning that even if the infringement allegations are 

true, the would-be infringer is not liable because the patent is invalid. Parties accused of 

infringement can also file a lawsuit for declaratory judgment to preemptively obtain a court 

decision on whether they are infringing or whether the patent is valid.

27For example, see Allison, J., Lemley, M., and Schwartz, D. Understanding the Realities 

of Modern Patent Litigation. Hoover Institution Working Group Paper (2014).

28Bringing a patent infringement lawsuit can also be costly but is generally less costly than 

defending one. In civil lawsuits, the parties must exchange certain information relevant to 

the litigation, a process known as discovery. Discovery costs in complex litigation, 

including patent infringement litigation, can run into the millions of dollars. In many cases, 

patent owners have less information to disclose and thus have lower discovery costs. 

They also cannot be countersued for patent infringement. See GAO-13-465. 

29GAO-13-465. 

3035 U.S.C. § 6(a).

Administrative 

Proceedings for 

Challenging Patent Validity 

before the Patent Trial and 

Appeal Board
Page 11 GAO-18-320 U.S. Patent And Trademark Office

members of senior management, meet regularly to discuss operational 

and procedural matters of importance to the board’s overall mission, 

according to the board.

The AIA created three new administrative proceedings for the board to 

administer, each with different statutory rules (see table 1).31 Two 

proceedings were made permanent:

• Post-grant review provides a 9-month opportunity following the 

issuance of a patent during which a third party can file a petition to 

challenge a patent’s validity on any of the four statutory grounds: 

subject matter eligibility, novelty, non-obviousness, and clarity.

• Inter partes review is available to third parties for the life of the patent, 

but on a limited set of grounds (non-novelty or obviousness), and on a 

limited set of acceptable prior art (previously issued patents and 

printed publications).32

The third proceeding—the CBM program—was included in the act as a 

temporary proceeding that can be used to challenge a patent at any point 

in its life, as allowable under the inter partes review program.33 However, 

under the CBM program, only a party (e.g., a company or an individual) 

that is sued or charged in an infringement suit can petition. Such 

petitioners can challenge a patent’s validity on any of the four statutory

grounds without the limits on prior art in inter partes review. Additionally, 

rules about which arguments parties are officially barred from being 

raised again in later legal actions (called estoppel provisions) are less 

restrictive under the CBM program than for the other two board 

proceedings. However, the body of patents that qualify for review under 

the CBM program is limited to those that claim a non-technological 

method involved in the practice, administration, or management of a 

financial service or product. A patent is “technological” if it claims a 

 31The board also performs ex parte re-examinations, which are third-party or patent owner 

requests for a patent’s application to be re-examined, as well as derivation proceedings, 

which is an opportunity for an applicant to show that an earlier filing applicant “derived” his 

or her invention from the later filing applicant’s invention.

32In contrast, petitioners in post-grant review may use a wide variety of prior art, such as 

offers for sale and public use, as evidence of non-novelty and obviousness.

33The committee report issued by the House Committee on the Judiciary noted that 

observers believed poor business method patents were issued in the late 1990s and the 

early 2000s. At the time, according to the committee report, USPTO lacked a sufficient 

number of examiners with expertise in relevant prior art. The program would only need to 

be temporary, and it was designed to sunset 8 years after implementation. 
Page 12 GAO-18-320 U.S. Patent And Trademark Office

technological feature that solves a technical problem using a technical 

solution.34 Many software and business method patents issued in the 

wake of State Street Bank describe implementing an abstract idea on a 

generic computer. Since the Supreme Court’s 2014 decision in Alice,

which closely aligns with the CBM program’s “non-technological”

designation, these types of ideas are no longer thought to be patentable.

Table 1: Characteristics of the Patent Trial and Appeal Board’s Inter Partes Review, Post-Grant Review, and Covered 

Business Method Programs

Inter partes

review program

Post-grant 

review program

Covered business 

method patent review program

Who may challenge? Any party Any party Any party sued or charged with an 

infringement suit

Filing time frame More than 9 months after 

issuance, but less than 1 

year from complaint

Less than 9 months

after issuance

More than 9 months after issuance

Allows challenges based 

on subject matter?

No Yes Yes

Allows challenges based 

on clarity?

No Yes Yes

Allows challenges based 

on novelty and 

obviousness?

Yes Yes Yes

Allowable prior art Patents; printed 

publications

Patents; printed publications; 

public use; offers for sale

Patents; printed publications; public use; 

offers for sale

Kinds of patents that can 

be challenged

Any Patents filed on or after March 

16, 2013

Methods involved in the practice, 

administration, or management of a 

financial product or service

Estoppel provisions Limited to arguments 

raised or that reasonably 

could have been raised

Limited to arguments raised or 

that reasonably could have 

been raised

Limited to arguments raised

Source: GAO review of Pub. L. No. 112-29; 35 U.S.C. chs. 31 and 32; 37 C.F.R. pt. 42 (Subpart D). | GAO-18-320

Note: Estoppel provisions refer to the set of arguments that the petitioner can no longer raise (i.e., 

what they are “estopped” from raising) in future litigation.

Inter partes review is the most-used of the proceedings created by the 

AIA and the one stakeholders we interviewed were most familiar with 

when they discussed the Patent Trial and Appeal Board. The other 

proceedings have been used less frequently, likely because of the short 

window for filing a challenge, in the case of post-grant review, and 

 3437 C.F.R. §42.301(b). 
Page 13 GAO-18-320 U.S. Patent And Trademark Office

because of additional restrictions on what patents may be challenged, in 

the case of CBM.

Under statute and regulation, the full review process at the Patent Trial 

and Appeal Board for any of the three proceedings generally takes up to 

18 months and comprises two phases: (1) the petition phase, which lasts 

up to 6 months, and (2) the trial phase, which generally lasts up to 12 

months.35 During the petition phase, the petitioner—typically a party 

accused of patent infringement, in the CBM program— files a petition 

challenging the validity of one or more of the patent’s claims and pays 

fees for each challenged claim.36 In some cases, a petitioner will file more 

than one petition challenging a patent. This might occur when a petitioner 

is constrained by the maximum number of pages allowed in a petition. 

Multiple petitions can also be filed against a single patent if the patent 

owner has sued more than one party for infringement, and each files a 

separate petition challenging the patent’s validity. Petitioners might also 

file a petition under more than one proceeding, either concurrently or 

sequentially.

When a petition is received and the fees paid, administrative personnel of 

the board, under direction of the Chief Judge, assign three technically 

trained administrative patent judges to the case.37 According to agency 

documents, these three-judge panels are put together taking into account 

many factors, including technical experience, experience at the board, 

potential conflicts of interest, and availability. The patent owner may then, 

within 3 months of the petition date, file a preliminary response to the 

petitioner’s arguments. Within 3 months of submission of any preliminary 

response, or the last date on which such response may be filed, the panel 

of judges determines whether to allow the petition to move to the trial 

phase for review. This determination is called the “institution decision.”38

According to statute and regulations, in the case of the CBM program and 

35The statute allows for an extension of up to 6 months for good cause. See 35 U.S.C. §§

316(a)(11), 326(a)(11).According to agency documents, only one CBM case has been 

extended for good cause to date. See SAP America, Inc. v. Arunachalam, Case 

CBM2016-00081 (Patent Trial and Appeal Board, Dec. 21, 2017). 

36For example, a CBM petition challenging up to 15 patent claims costs $30,000; $18,000 

of which may be reimbursed to the petitioner if the petition is not instituted for trial.

37In limited circumstances the panels consist of more than three judges, generally an odd 

number such as five or seven.

3835 U.S.C. §§ 314(b), 324(c).
Page 14 GAO-18-320 U.S. Patent And Trademark Office

post-grant review, a panel of judges may not institute a review unless the 

information presented in the petition, if not rebutted, would demonstrate 

that it is “more likely than not” that at least one of the claims challenged in 

the petition is unpatentable, or in the case of inter partes review, if the 

petitioner has a “reasonable likelihood” of prevailing.

The first step in the trial phase is discovery (a step that exists in all federal 

civil litigation), during which the parties produce documents or testimony 

relevant to the challenged claims. Each party has 3 months to file 

discovery documents for the panel of judges’ review. If a petitioner and 

patent owner do not settle a case or it does not otherwise terminate, the 

case will proceed to the oral hearing. The hearing is an opportunity for the 

parties to make their strongest arguments and to answer judges’ 

questions, according to a board official, and after the hearing, the panel of 

judges will deliberate over the course of a few weeks or months and then 

issue its final written decision. The final written decision must be issued 

within 1 year of the institution decision, with limited exceptions.39 The 

patent owner may, for example, cancel one or more claims in the patent 

in an attempt to avoid institution of the trial.

Figure 2, shows the progression of a case from the petitioner’s filing 

to the panel of judges issuing a final written decision. 

39The Director of the USPTO may, for good cause shown, extend the 1-year period by not 

more than 6 months. In addition, AIA trials may be joined at the discretion of board judges 

if more than one petition is filed against the same patent and the USPTO Director 

determines that more than one of the petitions warrants institution. In these cases, the 1-

year limit and 6-month extension may be adjusted. See. 35 U.S.C. §§ 315(c), 316(a)(11), 

325(c), 326(a)(11). 
Page 15 GAO-18-320 U.S. Patent And Trademark Office

Figure 2: Patent Trial and Appeal Board Process and Timeline

Under its Standard Operating Procedures, every Patent Trial and Appeal 

Board decision is, by default, a routine opinion until it is designated as 

“representative,” “informative,” or “precedential.” 

• Representative decisions typically provide a representative sample of

outcomes on a particular matter; they are not binding authority.

• Informative decisions provide norms on recurring issues, guidance on

issues of first impression,40 and guidance on the board’s rules and

practices; they are not binding authority.

• Precedential decisions are binding authority and emphasize decisions

that resolve conflicts or address novel questions.

Nominations for these designations can be made by a Patent Trial and 

Appeal Board judge, the Chief Judge, the Director of USPTO, the Deputy 

Director of USPTO, the Commissioner for Patents, or the Commissioner 

for Trademarks. Also, a member of the public may nominate a decision 

for a precedential designation within 60 days of its issuance. The Chief 

Judge can designate a nominated decision as representative or 

informative, but under Standard Operating Procedures, a precedential 

designation requires a majority agreement among all voting members of 

40An issue of first impression, in law, is a case that presents a court with an issue of law 

that has not previously been decided by any controlling legal authority in that jurisdiction. 
Page 16 GAO-18-320 U.S. Patent And Trademark Office

the board, including administrative patent judges and statutory members, 

as well as concurrence by the Director of the USPTO.

Petitioners and patent owners may appeal the final written decisions of 

the Patent Trial and Appeal Board to the U.S. Court of Appeals for the 

Federal Circuit, just as unsatisfied plaintiffs or defendants may appeal a 

federal district court decision, and decisions may ultimately be appealed 

to the U.S. Supreme Court. The following decisions have significantly 

influenced the eligibility rules for CBM review, for different reasons:

• In Cuozzo Speed Technologies, LLC v. Lee (June 2016), the U.S.

Supreme Court affirmed the board’s use of the “broadest reasonable

construction” standard—meaning the ordinary meaning that someone

skilled in the art would reach—to define the language of the claims

during post-grant review as a reasonable exercise of the board’s

rulemaking authority.41 Defining claim language using the broadest

reasonable interpretation meant that the number of business method

patents that could be determined as financial in nature is larger than it

would otherwise be, so more patents are potentially eligible for review

under the CBM program.

• In Unwired Planet, LLC v. Google Inc. (November 2016), the U.S.

Court of Appeals for the Federal Circuit ruled that the USPTO’s policy

of assessing whether a claim’s activities were “incidental” or

“complementary” to a financial activity was too broad a standard to

apply when determining whether a patent claim was eligible for a

CBM review. The court stated that, to be CBM-eligible, a patent must

claim a method used in the practice, administration, or management

of a financial product or service.42 Applying this narrower standard

effectively reduced the number of patents accepted for review under

the CBM program.

• In Secure Axcess, LLC v. PNC Bank Nat’l Assoc. (February 2017),

the U.S. Court of Appeals for the Federal Circuit clarified that a CBM

patent must specifically have a claim that contains an element of

financial activity in order for a patent to qualify for review under the

CBM program.43 Like the Unwired Planet decision, the narrower

41Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131, 2136 (2016).

42Unwired Planet, LLC v. Google Inc., 841 F. 3d 1376,1382 (2016).

43Secure Axcess, LLC v. PNC Bank Nat’l Assoc., 848 F. 3d 1370,1381 (2017). 

Court Decisions on 

Eligibility for Review under 

the CBM Program
Page 17 GAO-18-320 U.S. Patent And Trademark Office

standard expressed by the court has led to fewer patents being

eligible for review under the CBM program.

From September 2012 through September 2017, parties accused of 

patent infringement filed 524 petitions challenging the validity of 359 

distinct patents under the CBM program, resulting in rulings against about 

one-third of these patents. The average monthly number of CBM petitions 

fluctuated during this period, but use of the program has declined since 

about 2015. Some stakeholders have expressed concern about multiple 

petitions being filed against the same patent, but our analysis of petition 

data showed that the vast majority of patents challenged under the CBM 

program were challenged once or twice.44 Overall, through September 

2017, the Patent Trial and Appeal Board completed reviews of 329 of the 

359 patents challenged under the program, and the board ruled at least 

some challenged patent claims unpatentable in about one-third of these 

patents.

Parties accused of patent infringement filed 524 petitions for patent 

review under the CBM program from September 2012 through September 

2017, with the number of petitions per month fluctuating but tapering off 

over time (see fig. 3). During this 5-year period, an average of more than 

9 petitions per month were filed under the CBM program, but this average

rate has declined since 2015 to fewer than 5 per month in the last fiscal 

year, with no petitions filed in August or September 2017. As a point of 

comparison, the number of petitions for inter partes review has generally 

increased over the 5-year period.45

 44We analyzed petition data from RPX Corporation and Unified Patents. See Appendix I 

for more detail.

45Our analysis of petition data shows that the number of petitions for inter partes review 

climbed over the 5-year period we reviewed. Specifically, there were 6,958 total petitions 

for inter partes review filed between September 2012 and September 2017, for an 

average of 114 petitions filed per month. In the last fiscal year, the monthly average 

number of petitions for inter partes review was about 151. Post-grant review petitions 

accounted for the lowest percentage of petitions filed—about 1 percent. From September 

2012 through September 2017, 78 post-grant review petitions challenged 68 unique 

patents.

More Than 350 

Patents Have Been 

Challenged under the 

CBM Program, and 

About One-Third of 

These Patents Were 

Ruled Unpatentable

Petitioners Have 

Challenged the Validity of 

359 Patents under the 

CBM Program, but Use of 

the Program Has Declined 

Overall
Page 18 GAO-18-320 U.S. Patent And Trademark Office

Figure 3: Number of Petitions Filed for Review under the Covered Business Method Program per Month, September 2012 

through September 2017

Stakeholders we interviewed suggested several possible reasons for the 

decline in CBM petitions. Specifically, some stakeholders told us that 

recent Federal Circuit and Supreme Court decisions that have changed 

what is patentable subject matter and the eligibility criteria for CBM review 

may have reduced the set of business method patents eligible for CBM 

review.46 Some stakeholders also suggested CBM petitioners 

successfully targeted the lowest-quality business method patents in the 

early years of the program, and now that those patents have been 

challenged, there are fewer patents that do not meet patentability 

requirements. Another possibility, according to stakeholders, is that 

owners of business method patents are wary of asserting their intellectual 

property and risking its invalidation, especially in light of the Alice

decision, which effectively limited the patentability of some business 

methods. As a result, according to these stakeholders, fewer such 

 46These decisions include, for example, Cuozzo Speed Technologies, LLC v. Lee, 136 S. 

Ct. 2131, 195 L. Ed. 2d 423 (2016); Unwired Planet, LLC v. Google Inc., 841 F. 3d 1376 

(Fed. Cir. 2016); and Secure Axcess, LLC v. PNC Bank Nat’l Assoc., 848 F. 3d 1370 

(Fed. Cir. 2017).
Page 19 GAO-18-320 U.S. Patent And Trademark Office

patents end up in litigation and subsequently before the Patent Trial and 

Appeal Board. Some stakeholders also told us the CBM program has 

reduced patent infringement lawsuits, including some filed by nonpracticing entities. In addition, a few stakeholders told us some patent 

owners may be waiting until after the CBM program sunsets to assert 

their patents.

Some stakeholders we interviewed were concerned about multiple 

petitions being filed against the same patents; however, our analysis 

showed that the vast majority of the 359 distinct patents challenged under 

the CBM program were challenged only once or twice under that 

program. Stakeholders have suggested that petitioners are, in some 

cases, using the CBM program and the inter partes review program as 

tools to increase costs borne by patent owners, and in the case of the 

CBM program, as a tool to delay district court proceedings.47 Some 

stakeholders have stated that the use of the AIA trials in this manner 

amounts to harassment, and at least one stakeholder has written letters 

to USPTO requesting the Director to intervene.48

However, our analysis of petition data showed that among the 359 

patents challenged under the CBM program, 73.3 percent were 

challenged once and 18.4 percent were challenged twice during the 5-

year period we reviewed. Another thirty patents, or 8.4 percent, were 

challenged more than twice under the CBM program during this period 

(see fig. 4).49 Of these 30 patents, in many cases multiple parties 

challenged a single patent; in others, a single petitioner or set of 

petitioners challenged a patent multiple times.

 47One patent owner told us that his company felt that petitioners were unfairly coordinating 

their petitions to unnecessarily draw out the administrative reviews and, by extension, the 

federal district court proceedings.

48See 35 U.S.C. § 316(a)(6), granting the director of USPTO discretion to prescribe 

sanctions in cases where there is “improper use of the proceeding, such as to harass or 

cause unnecessary delay.”

49Although the CBM program is used much less often than the inter partes review 

program, the proportion of patents challenged with multiple petitions within each 

proceeding was similar: 87.3 percent of patents challenged under inter partes review were 

challenged either once (2,866 patents, or 67.4 percent) or twice (843 patents, or 19.8 

percent).

Patents Are Infrequently 

Challenged More Than 

Once or Twice 
Page 20 GAO-18-320 U.S. Patent And Trademark Office

In addition, of the 359 patents challenged under the CBM program during 

the 5-year period we reviewed, 92 were also challenged at least once in 

inter partes review.50 In some instances, petitioners filed concurrent 

petitions for CBM and inter partes review if, for example, they were 

unsure if the claims were eligible for a CBM review. In other instances, 

petitioners first sought CBM review and, when that was unsuccessful, 

filed an inter partes review. In these cases, petitioners may initially be 

seeking CBM review because of the additional grounds available for 

challenging the patents, and then turning to the inter partes review 

program if the CBM challenge proves unsuccessful. In other instances, 

petitioners first had success under the inter partes review program and 

then filed another petition under the CBM or inter partes review programs, 

according to our analysis of petition data.

When including patent challenges under both the CBM and inter partes

review programs, 52.1 percent of the 359 patents challenged under the 

CBM program were challenged once and 29.3 percent were challenged 

twice (see fig. 4).51 More than half of the patents challenged under both 

programs (50 of 92 patents) did not have any challenged patent claims 

instituted for trial under the CBM program, meaning that those patents, in 

many cases, did not meet the CBM program’s eligibility requirements and 

may have been more appropriately challenged with an inter partes

review.52

 50None of the patents challenged under the CBM program were also challenged under the 

post-grant review program. 

51Similarly, when including challenges under the CBM and post-grant review programs, of 

the 4,250 patents challenged under the inter partes review program, 86.5 percent were 

challenged once or twice (66.1 percent and 20.4 percent, respectively). 

52Of the remaining 42 patents challenged under both programs, 16 had all instituted 

claims ruled unpatentable under the CBM program, 16 were settled or otherwise 

terminated after institution under the CBM program, and 4 were settled or otherwise 

terminated before institution under the CBM program. The remaining 6 patents are in 

cases that are still pending under the CBM program as of September 30, 2017.
Page 21 GAO-18-320 U.S. Patent And Trademark Office

Figure 4: Percentage of Patents Challenged under the Covered Business Method 

Program That Were Challenged Once or in Multiple Proceedings, September 2012 

through September 2017

There are several other reasons why petitioners may file more than one 

petition against a single patent, according to stakeholders we interviewed. 

First, the board limits the number of pages that a petitioner may use to 

submit prior art and arguments for invalidity. Some petitioners might file 

more than one petition so they have room to present all of their art and 

arguments at once. Data we analyzed on CBM petitions show that many 

follow-on petitions are filed on or near the same day as the first petition, 

supporting this argument. Second, in some cases the patent owner may 

not identify all the asserted patent claims in the district court right away or 

may change the set of asserted claims later in the proceedings, 

necessitating an additional CBM or inter partes review petition to cover 

the new claims. Third, in order to get the expensive district court 

proceedings stayed—that is, halted pending the board’s decision on the 

patent’s validity—a petitioner may file a CBM petition on patentability or 

clarity grounds soon after the district court trial commences, because 

these arguments require limited time to formulate. Later, once the 

petitioner takes the time to investigate the prior art, the petitioner might 
Page 22 GAO-18-320 U.S. Patent And Trademark Office

file a second petition challenging the patent for non-novelty or 

obviousness. In our analysis of petition data, we found some examples 

that were consistent with this approach. Fourth, if a patent owner charges 

multiple entities with patent infringement, each of the alleged infringers 

has an individual right to file a petition challenging the patent’s validity. 

The defendants in the infringement suits who become petitioners at the 

board may collaborate with one another and join their cases, but they 

may also choose to file petitions individually. In our analysis of petition 

data, we found examples of both. Petitioners might choose to join their 

cases in order to share the cost of counsel, while others may choose not 

to join their cases, perhaps because they use substantially different art 

and arguments in their petitions.

Our analysis of the petition data found some examples of multiple 

petitions against a single patent that may raise questions about the 

legitimacy of the follow-on petitions. In some instances, a second, followon petition challenging the patent’s validity on the same statutory grounds 

as it did in the first petition was filed by the same petitioner after the first 

petition was denied institution. This type of multiple petitioning may occur 

when, for instance, a procedural termination resulted from a technical 

error in the first petition. Board officials said it may also occur because a 

petitioner is using the first denial of institution to alter the arguments and 

guide the second petition, a strategy that the board has labeled “roadmapping.” In other instances, a single petitioner filed a second, follow-on 

petition challenging the patent on different statutory grounds after the first 

petition was denied institution. These follow-on petitions may be 

legitimate attempts to correct simple errors in the first petitions, or they 

may reflect practices that might raise questions about whether the 

program is being used as intended.

Patent Trial and Appeal Board officials are aware of concerns over 

multiple petitions and recently concluded a study about the prevalence of 

such practices in relation to all three types of proceedings created by the 

AIA. The board found that almost two-thirds (63.4 percent) of follow-on 

petitions were filed on or near the same day as the first petition. Nearly 

three in four (72.4 percent) follow-on petitions were filed before the 

institution decision on the first petition. These findings suggest that most 

petitioners are not waiting to use the board’s decision of non-institution as 

a guide for developing a second petition. Moreover, the board officials we 

interviewed told us they are empowered to deny a petition if they 

determine the petition presents the same or substantially the same prior 

art or arguments previously presented in another petition. Board officials 

told us they had denied several recent petitions on this basis. In addition, 
Page 23 GAO-18-320 U.S. Patent And Trademark Office

in a recent precedential opinion, the board clarified the characteristics it 

looks for to determine whether it should deny an inter partes review when 

a petitioner submits a follow-on petition.53 These characteristics include 

whether the petitioner previously filed a petition against the same patent 

claims; whether the petitioner provides adequate explanation for the time 

elapsed between filing two or more petitions against the same patent 

claims; and whether the petitioner knew, or should have known, about the 

prior art presented in the second petition at the time of the first petition.

The Patent Trial and Appeal Board has ruled unpatentable some or all of

the patent claims instituted for trial in about one-third of challenged

patents and about one-third of petitions under the CBM program. Data on

petition outcomes, however, are open to different interpretations

depending on how they are presented. For example, board judges ruled 

some or all of the patent claims considered at trial unpatentable in 96.7

percent of petitions (175 of 181) under the CBM program for which they

issued a final written decision from September 2012 through September

2017.54 On the basis of this statistic, the board could seem to invalidate 

the majority of the patents it reviews, as noted by some stakeholders.

However, this outcome is predictable given the criteria for institution of a

CBM trial—a judge panel will institute a petition to the trial phase if it is

“more likely than not” that at least one of the claims challenged in a 

petition is unpatentable55—which tips outcomes for instituted petitions

toward rulings of unpatentability. In addition, board judges did not issue

final written decisions for all petitions that enter the trial phase because 

the parties often reach a settlement before the final written decision.

When taking into account all of the CBM petitions that had an outcome as

53See General Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016–01357, slip 

op. 15−19 (Patent Trial and Appeal Board, Sept. 6, 2017) (Paper 19); see also 35 U.S.C. 

§ 314(a).

54Some petitions are still pending an institution or final written decision. For the purposes

of this section, we included information on the outcomes of only those cases that have an 

outcome as of September 30, 2017. 

5535 U.S.C. § 324(a).

Claims Have Been Ruled 

Unpatentable in More 

Than One-Third of Patents 

Challenged under the 

CBM Program
Page 24 GAO-18-320 U.S. Patent And Trademark Office

of Sept 30, 2017, board judges ruled some or all of the claims considered 

at trial unpatentable in 35.6 percent of the cases (175 of 492).56

The results are similar when considered by patent rather than by petition. 

Specifically, for patents challenged between September 2012 and 

September 2017 and for which a final written decision was issued in at 

least one petition, 95.2 percent of patents (120 of 126) had some or all 

the patent claims that were instituted for trial ruled unpatentable. 

However, because not all challenged patent claims are instituted for trial 

and because final written decisions are not issued for all petitions that 

enter the trial phase, it is also accurate to say the board judges ruled 

some or all of the patent claims unpatentable for 36.5 percent of 

challenged patents (120 of the 329) that had an outcome as of 

September 30, 2017 (see fig. 5).

 56Some of the 13 petitions pending an institution decision and the 19 petitions pending a 

final decision may result in challenged claims being ruled unpatentable, so we may be 

underestimating the eventual rate of invalidation. If the current pattern of invalidation 

continues, about 16 additional patents will have at least some claims ruled unpatentable, 

resulting in an overall rate of invalidation of about 36.5 percent. For inter partes review, of 

the 5,563 petitions with an outcome as of Sept. 30, 2017, 1,700 reached a final written 

decision. Of those, 1,364 had a final written decision of some or all claims considered at 

trial ruled unpatentable. This means that about 80.2 percent of all petitions that reached a 

final written decision and about 24.4 percent of all petitions with an outcome had some or

all claims ruled unpatentable.
Page 25 GAO-18-320 U.S. Patent And Trademark Office

Figure 5: Outcomes for Patents Challenged under the Covered Business Method Program for Petitions Filed, September 2012 

through September 2017

Note: The three-judge panel may not institute a trial for review under the Covered Business Method 

program unless the information in the petition shows that the challenged claim or claims are “more 

likely than not” unpatentable. “Terminated before institution” includes petitions that were settled or 

otherwise terminated before institution. “Terminated after institution” includes petitions that were 

settled, terminated, or received an adverse judgment after institution. Actions construed as a request 

for adverse judgment include a patent owner disclaiming challenged patent claims, concession of 

unpatentability in the contested matter, and abandonment of the contest.

Changes in petition outcomes over time also challenge the idea that the 

board invalidates most patents it reviews. In particular, the percentage of 

CBM petitions instituted for trial has decreased over time (see fig. 6). In 

2012, about 80.0 percent of CBM petitions had some or all challenged 

claims instituted. In comparison, in 2016 about 53.5 percent of CBM 

petitions had some or all claims instituted. Preliminary data for 2017 

suggests that this trend might continue: through September 2017, about 

38.5 percent of CBM petitions had some or all claims instituted. Similar to 

the decline in number of petitions filed, this trend might have a few 

explanations, according to stakeholders. Specifically, board panels might 

be less likely to institute a petition for trial based on conclusions of the 
Page 26 GAO-18-320 U.S. Patent And Trademark Office

U.S. Court of Appeals for the Federal Circuit in Unwired Planet and 

Secure Axcess. Another possibility is that the patents in earlier cases 

represented the easiest targets for validity challenges, and thus the more 

recent challenges are based on shakier legal grounds and less likely to 

meet the CBM program’s institution threshold.

Figure 6: Covered Business Method Institution Decision Outcomes, Calendar Years 

2012 through 2017

Note: The three-judge panel may not institute a trial for review under the Covered Business Method 

program unless the information presented in the petition shows that the challenged patent claim or 

claims are “more likely than not” unpatentable. This analysis includes all petitions that have reached 

an institution decision, even those that later ended in settlement or were otherwise terminated after 

institution.
Page 27 GAO-18-320 U.S. Patent And Trademark Office

In addition to declining institution rates, there has been an increase in the 

percentage of CBM petitions that settle before reaching an outcome. 

Specifically, the percentage of cases where the parties settled their 

dispute either before or after the institution decision increased from about 

6.7 percent in 2012 to about 28.9 percent in 2016.57 When a case before 

the board is settled, it generally concludes any concurrent district court 

infringement case. The patent owner’s intellectual property remains in 

place, and the patent owner is free to assert the patent against other 

alleged infringers later.

The Patent Trial and Appeal Board has completed all trials under AIAauthorized proceedings within statutorily directed time frames, according 

to board data, and the board has taken steps to review issues that could 

affect the consistency of its trial proceedings and decisions and to engage 

with stakeholders to improve its proceedings. To ensure timeliness of trial 

proceedings, the board provided a checklist of information and time 

frames to petitioners and patent owners, among other things. According 

to board documents and interviews with officials, the board has also taken 

steps to review and assess its trial proceedings and decisions, but it does 

not have guidance for reviewing trial decisions, or the processes that lead 

to the decisions, for consistency. The board has also taken several steps 

to engage with stakeholders regarding various aspects of trial 

proceedings.

According to data on Patent Trial and Appeal Board proceedings, as of 

September 31, 2017, all trials under AIA-authorized proceedings, 

including the CBM program, have been completed within statutorily 

directed time frames. The board maintains a database of trial proceedings 

that includes the date of each petition, decision to institute a trial, and final 

written decision. Board officials we interviewed told us the timeliness of 

decisions to institute a trial and of final written decisions has not been a 

concern in the 5 years that it has operated. According to board officials, 

as of November 2017, two AIA trials—one under the inter partes review

program and one under the CBM program—have been extended for good 

 57No petitions filed in 2017 have been instituted to date and none have been settled 

before the institution decision. 

The Board Met 

Timeliness 

Requirements and 

Has Taken Steps to 

Analyze Decisions 

and Improve 

Proceedings but 

Does Not Have 

Guidance to Ensure 

Decision Consistency

Patent Trial and Appeal 

Board Data Indicate Trials 

Have Been Completed 

within Statutorily Directed 

Time Frames
Page 28 GAO-18-320 U.S. Patent And Trademark Office

cause past the typical 1-year time limit between the institution decision 

and the final written decision, as allowed by statute.58

Board officials told us they have taken several steps to ensure that trials 

are completed within required time frames. According to board 

documentation, between 2012 and 2017, for example, the board hired 

more than 150 additional administrative patent judges, in part to preside 

over AIA trials.59 In addition, the board has taken several proactive 

administrative steps to help ensure that stakeholders are aware of 

requirements for information filing and dates. For example, when a 

petition is filed, the board’s administrative staff creates a checklist of 

information required and due dates, and communicates these dates and 

requirements to petitioners and patent owners throughout the trial.

Some stakeholders have expressed concern that AIA trial time frames are 

too short and deprive patent owners and petitioners of due process rights. 

One patent attorney that we spoke with, for example, noted that the short 

time frames limit discovery. As directed by the AIA, a final determination 

for a review generally must be issued not later than 1 year after the date a 

review has been instituted, and the director may extend that period by up 

to 6 months for good cause. Board officials we interviewed stated that 

they do not believe parties are having trouble completing discovery 

activities in the time allotted in view of the limited discovery allowed at the 

board. Board officials further stated that they have not found compelling 

reasons to extend trial proceedings on the basis of the need for additional 

discovery. As reflected in USPTO’s strategic plan, timeliness of the 

board’s trial process is a key program goal, and board officials said trials 

would be extended only in unusual circumstances. In addition, board 

officials stated that the board adheres to the 12-month timeline for final 

written decisions because this timeline gives the district courts a definitive 

and predictable endpoint for the trials.

 58Both trial extensions occurred in late 2017, and both were in response to the Oct. 4, 

2017 U.S. Court of Appeals for the Federal Circuit decision in Aqua Products, Inc. v. 

Matal, 872 F.3d 1290. AIA trials may be joined at the discretion of board judges if more 

than one petition is filed against the same patent and the USPTO Director determines 

than more than one of the petitions warrants institution. See 35 U.S.C. § 325(c). In these 

cases, the 12-month time frame may be adjusted. See 35 U.S.C. § 325(a)(11). 

59Board judges also preside over other proceedings in front of the board, including ex 

parte reexaminations, which are a means for appealing adverse decisions of examiners in 

relation to issued patents, i.e., original and amended claims. 
Page 29 GAO-18-320 U.S. Patent And Trademark Office

The Patent Trial and Appeal Board has decision review processes that 

help ensure trial decisions are revisited as appropriate, but the board 

cannot ensure the consistency of these decisions because it does not 

have guidance for reviewing them or the processes that lead to them. For 

trials still in progress, board officials told us that there are several ways 

that management gets involved in reviews. According to officials, a review 

of an ongoing trial is triggered if and when a paneled judge raises any 

issue deserving of management attention. Such issues are brought to the 

attention of the Chief Judge or other members of the board’s 

management team and are acted upon at their discretion. According to 

board officials, the usual response is a management meeting with the 

three-judge panel, with the goal of ensuring the judges are aware of any 

precedent or ongoing trials dealing with similar issues. The officials said 

these review meetings are also meant to ensure that board management 

is aware of any decisions that may be relevant to the stakeholder 

community or the public. According to board officials, issues that may 

prompt action include those that are not routine in nature, that involve 

novel questions of law, or that may result in decisions that could 

contradict previous board decisions. Board officials called these review 

meetings the first step for keeping track of key issues. Board officials told 

us these reviews raise a fair number of issues, but the process relies on 

self-reporting by the judges, and board officials told us the effectiveness 

of these reviews is not measured.

Board officials also told us that a separate internal review process has 

evolved over time, whereby a small group of board judges, in consultation 

with board management, seeks to ensure decision quality and 

consistency by reading a large number of draft AIA trial decisions and 

giving feedback or suggestions to authoring judges prior to issuance. The 

board is currently drafting a formal charter that will outline the group’s 

function, reviewer selection, and membership term. According to board 

officials, these reviews are meant to help ensure consistency with 

applicable board rules, other board decisions, and Federal Circuit and 

Supreme Court case law. In addition, such reviews may result in coaching 

and training to increase an individual judge’s quality of performance.

Regarding completed trials, board officials told us they review any board 

AIA trial decisions that are appealed to the U.S. Court of Appeals for the 

The Board Has Taken 

Several Steps to Review 

Issues That Affect Trial 

Proceedings, but It Does 

Not Have Guidance to 

Ensure the Consistency of 

Its Decisions
Page 30 GAO-18-320 U.S. Patent And Trademark Office

Federal Circuit and that the appeals court reverses or remands.60

Specifically, the board monitors Federal Circuit decisions and board 

management then reviews any reversals or remands for opportunities to 

improve processes and stay abreast of emerging issues. According to 

board officials, for any reversal or remand, board management and 

members of the three-judge panel that decided the case meet to discuss 

what steps could have been taken to avoid the Federal Circuit reversal or 

remand, and what else can be learned from the Federal Circuit decision. 

In some instances, according to officials, the board will host a session 

where all board judges are invited to review and discuss the trial court 

decision and the decision of the Federal Circuit. In addition, board officials 

told us they track data on Federal Circuit affirmances, remands, and 

reversals. The board has recently updated its Standard Operating 

Procedure to provide guidance on how it handles cases remanded by the 

Federal Circuit.61 This procedure creates internal norms to promote 

timeliness and consistency of the board’s response to remands. The 

procedure includes a goal for the board to issue decisions on remands 

within 6 months of receipt and calls on the Chief Judge and the Deputy 

Chief Judge to discuss each remanded case with the presiding threejudge panel before the panel expends substantial effort on the case. The 

Chief Judge may also elect to expand the panel assigned to the 

remanded case, when deemed prudent.62

Furthermore, officials told us that all board decisions—including final 

written decisions, decisions to institute a trial, and any substantive 

orders—are reviewed by board judges on the date of issuance. 

Specifically, a rotating group of judges, on a voluntary basis, reads and 

analyzes each day’s decisions and, according to board officials, sends a 

summary list of the number of decisions made that day along with a brief 

decision summary for any cases where key issues of interest were raised. 

Board officials said that most decisions are straightforward and generally 

not summarized in detail. For decisions highlighted in the summary 

report, according to officials, a lead judge, in most cases, will then review 

 60A remanded case is one that is sent back to the Patent Trial and Appeal Board for 

further action. According to data provided by the board, less than 20 percent of appeals 

have resulted in reverses or remands from fiscal year 2015 to fiscal year 2017. 

61See Standard Operating Procedure 9, “Procedure for Decisions Remanded from the 

Federal Circuit for Further Proceedings” (Dec. 14, 2017). 

62The Standard Operating Procedure states that the Chief Judge expects panel expansion 

to be a rare occurrence.
Page 31 GAO-18-320 U.S. Patent And Trademark Office

the decision more closely. Example summary lists provided to us by the 

board show brief summaries of a trial involving interpretations of prior art 

admissibility and a trial dealing with an interpretation of a challenge based 

on clarity.

Finally, board officials told us that the board has begun to increase the 

number of trial decisions considered for precedential and informative 

designations as part of its efforts to ensure the consistency of trial 

decisions. Board officials also told us that increasing the number of these 

designations had not been a priority while the AIA trial procedures and 

processes were being operationalized and as the board was hiring more 

than 150 administrative patent judges over the past 5 years. However, 

officials said that they are now taking steps to simplify the vetting and 

voting process, and the board expects more precedential and informative 

designations going forward.

Taken together, the board’s review processes help ensure that board trial 

decisions are reviewed in some manner. However, because the board 

does not have documented procedures for how to review decisions for 

consistency, the board cannot fully ensure the consistency of the 

decisions or the processes that lead to them. USPTO’s 2014-2018 

strategic plan includes the goal to “optimize patent quality and timeliness,”

which includes an objective to “maintain [the board’s] ability to provide 

high-quality decisions.” As part of this objective, the plan states that it is 

“critical for the [the board] to ensure consistency in its decisions through 

review of decisions in [trial] proceedings.”

Under federal standards for internal control, management should design 

control activities to achieve objectives and respond to risks. Such control 

activities include clearly documenting internal control in a manner that 

allows the documentation to be readily available for examination. The 

documentation may appear in management directives, administrative 

policies, or operating manuals. However, the board has not yet clearly 

documented how judges are to review trial decisions, or the processes 

that lead to the decisions, to ensure consistency. Without developing 

guidance, such as documented procedures, outlining the steps USPTO 

will take to review the Patent Trial and Appeal Board decisions and the 

processes that lead to decisions, USPTO cannot ensure that it is fully 

meeting the objective of ensuring consistency of its decisions.
Page 32 GAO-18-320 U.S. Patent And Trademark Office

The Patent Trial and Appeal Board has taken several steps to engage 

stakeholders regarding trial proceedings and decisions and address 

related concerns. USPTO’s strategic plan states that the board should 

expand outreach to stakeholders by providing opportunities for interaction 

and updates on board operations and other important issues. The board 

has done so through several types of public outreach efforts, including 

participating in roundtables, webinars, and judicial conferences, among 

other activities. The board has made several changes to policies and 

procedures based on stakeholder feedback gathered through these 

mechanisms.

For example, after the Patent Trial and Appeal Board had been 

operational for about 18 months, it conducted a series of eight 

roundtables in April and May of 2014 at locations around the country to 

publicly share information concerning trial proceedings, to obtain public 

feedback on these proceedings, and to launch the process of revisiting its 

trial rules and trial practice guide. At these roundtables, the board 

provided the public with statistics summarizing the administrative trial 

proceedings, as well as lessons learned for filing effective petitions, 

engaging in successful discovery and amendment practice, and 

effectively presenting a case at oral hearing, among other things. The 

board also asked for and received feedback from the public on the AIA 

administrative trial proceeding rules and trial practice guide, as well as on 

experiences in general with the AIA administrative trial proceedings. 

Subsequent to the 2014 roundtables, the USPTO sought public input on 

all aspects of AIA trial proceedings through a June 27, 2014 Federal 

Register notice, which included 17 specific questions regarding certain 

trial rules, such as claim construction, the claim amendment process, and 

good cause trial extensions. USPTO took a two-step approach in 

responding to the 37 comments received in response to this Federal 

Register notice. First, USPTO implemented several immediate changes 

to board proceedings, including changes to page limits for some 

documents. According to the annual report of USPTO’s Patent Public 

Advisory Committee, these changes were favorably received by the 

stakeholder community. Second, in April 2016, the board implemented 

more substantive changes, including allowing testimonial evidence to be 

submitted with a patent owner’s preliminary response to a petition and 

changing from a page limit to a word count for major briefings, among 

other things.

In addition to roundtables, the board has engaged with stakeholders 

through several other mechanisms, including webinars and judicial 

The Patent Trial and 

Appeal Board Has Taken 

Several Steps to Engage 

Stakeholders and Address 

Stakeholder Concerns
Page 33 GAO-18-320 U.S. Patent And Trademark Office

conferences. For example, in February 2015, the board announced its 

inaugural “Boardside Chat” lunchtime webinar series, which has been 

held bi-monthly ever since. These webinars are designed to update the 

public on current board activities and statistics, and to allow a means for 

the board to regularly receive public feedback about AIA trial proceedings 

and any issues of concern. Topics discussed at these events include key 

trial decisions, proposed changes to trial rules, and best practices for prior 

art presentations in AIA trials, among other things. Since 2015, the board 

has hosted an annual judicial conference, where the board engages with 

stakeholders and educates them about AIA trial proceedings, answers 

questions, and receives feedback. Board judges present trial statistics, 

information about the internal functioning of the board, practice tips, and 

engage in discussions on topics of current interest to stakeholders. 

Topics have included motions to amend and the prevalence of multiple 

petitions. More recently, the board has conducted other outreach 

sessions, including:

• an August 2017 roundtable meeting with stakeholders from the 

American Intellectual Property Law Association to address a broad 

range of topics affecting practitioners before the board, including how 

patent claims are interpreted, claim amendments, and conditions 

under which multiple petitions from a single petitioner would be 

denied;

• a webinar on August 31, 2017, addressing common evidentiary issues 

that occur during AIA trial proceedings; and

• a webinar on September 12, 2017, with the Chief Judge to 

commemorate the 5th anniversary of the board, where discussion 

topics included the origins and mission of the board, recent board 

developments, and operational procedures.

According to USPTO’s Patent Public Advisory Committee, this type of 

outreach provides a valuable two-way conduit for constructive flow of 

information to and from the board. In addition to these various outreach 

efforts, stakeholders are encouraged to provide feedback to the board, on 

any topic related to trial proceedings, by e-mail or telephone.

Board officials we interviewed told us that they review information 

obtained from stakeholders during roundtable meetings and other 

outreach events and implement changes to policies and procedures 

where applicable. The officials told us that stakeholder feedback has 

been used to inform updates to the board’s trial rules guidance, to modify 

rules of practice, and in updating Standard Operating Procedures. In 

addition, board officials told us that in response to stakeholder concerns, 
Page 34 GAO-18-320 U.S. Patent And Trademark Office

they conducted two extensive studies covering motions to amend and the

filing of multiple petitions against a single patent. Furthermore, board 

officials told us that they have held training sessions for judges regarding 

specific areas of interest to stakeholders. Lastly, board officials also told 

us that the board’s website, including the frequently-asked-questions 

pages, is updated with information relevant to stakeholders, including 

stakeholder concerns. For example, written stakeholder comments 

submitted in response to a proposed rulemaking are posted on the 

USPTO website for public viewing.

Stakeholders we interviewed generally agreed that the CBM program has 

reduced litigation, and many said there is value in maintaining some 

aspects of the program. Stakeholders generally agreed that the CBM 

program has contributed to a decrease in litigation involving business 

methods patents and that the program has had positive effects on 

innovation and investment. Most stakeholders also said there is value in 

maintaining, among other things, the ability to challenge patents on all 

four statutory grounds before the Patent Trial and Appeal Board.

Stakeholders we interviewed generally agreed the CBM program has 

reduced litigation involving business method patents because the CBM 

program allows these patents to be more easily challenged than in district 

courts. Stakeholders told us that fewer business method patent lawsuits 

are filed and that existing lawsuits are often dropped after patents have 

been through the CBM program. However, stakeholders also noted that 

the Supreme Court’s 2014 decision in Alice may have also reduced the 

number of business method patent lawsuits. Patents that would be found 

invalid under Alice are often very similar to the patents that are eligible for 

challenge under the CBM program, and in some cases, according to 

stakeholders, it is cheaper and more efficient to challenge a patent’s 

validity in district court using Alice than it is to use the CBM program.63

 63Patents that are eligible for review under the CBM program must be non-technological in 

nature and, according to stakeholders, these have often been computer-implemented 

inventions that are invalid under Alice, in which the Supreme Court found that merely 

requiring generic computer implementation of an idea fails to transform that abstract idea 

into a patentable invention. Stakeholders told us that district court will often hear patent 

validity challenges under Alice before a trial begins and, if such a challenge is successful, 

the cost to invalidate the patent is lower than it would be under the CBM program. 

Stakeholders Agree 

the CBM Program 

Has Reduced 

Litigation, and Many 

See Value in 

Maintaining Aspects 

of the Program

Stakeholders Generally 

Agreed the CBM Program 

Has Contributed to a 

Decrease in Litigation 

Involving Business Method 

Patents
Page 35 GAO-18-320 U.S. Patent And Trademark Office

Stakeholders described the following additional effects of the CBM 

program:

• Business method patent assertion is riskier. The CBM program 

makes it riskier to assert business method patents because, 

compared with district court, the program offers a cheaper and more 

efficient way for alleged infringers to challenge a patent’s validity. 

District court litigation can take several years and cost several million 

dollars, while CBM trials are limited to 18 months and generally cost 

much less. In addition, technically trained board judges have greater 

expertise in patent law than an average district court judge and jury, 

and are often better able to understand complex patentability issues. 

Because of this, some alleged infringers are more willing to present 

complex arguments—such as questions about whether the patent 

meets standards for clarity—to the board than to a jury.64 As a result, 

the CBM program has deterred owners of financial business method 

patents from asserting their patents for fear those patents will be ruled 

unpatentable.65 According to stakeholders, the existence of CBM 

challenges has put downward pressure on settlement amounts. 

Patent owners may want to avoid the risk of their patent being 

invalidated and will demand lower settlement amounts to avoid the 

risk of CBM and district court proceedings. Petitioners, too, told us 

they use this knowledge to negotiate lower settlement fees.66 In 

addition, because challenges under the CBM program may suspend 

the parallel district court proceedings, it is more difficult for patent 

owners to expect quick settlements from alleged infringers looking to 

avoid the rapidly increasing court costs associated with lengthy trials. 

The parties can still reach settlements after the alleged infringer files a 

challenge under the CBM program, but the patent owners have less 

leverage in negotiations. On the other hand, for patent owners willing 

to go through a CBM challenge, their patents will emerge stronger 

having survived the additional review according to stakeholders we 

interviewed.

• Business method patent owners have adjusted assertion 

strategies to avoid the CBM program. Patent owners are focused 

 64Standards for patent clarity are described in 35 U.S.C. § 112. 

65Stakeholders told us that some patent owners may be waiting to assert their business 

method patents until after the CBM program has expired in September 2020. 

66Settlement terms are generally kept private, so limited data are available on settlement 

amounts. 
Page 36 GAO-18-320 U.S. Patent And Trademark Office

on asserting business method patents that are higher quality and less 

vulnerable to challenge under the CBM program or based on the 

Supreme Court’s decision in Alice; in other words, those patents that 

describe a technological invention that is not abstract and 

implemented on a generic computer. In addition, a few stakeholders 

told us that they have abandoned some claims in certain patents to 

avoid the possibility of their patents being challenged under the CBM 

program.67 Stakeholders also told us that patent owners seem to be 

asserting more patents, and more claims, than before the CBM 

program was implemented, as a strategy either to ratchet up defense 

costs for accused infringers and secure a settlement or to at least 

have success with some of the infringement charges.68 In addition, 

some stakeholders said that because the board charges fees for each 

petition challenging a patent, asserting more patents is a strategy to 

increase expected costs of defending against infringement and, thus, 

to increase the likelihood of a settlement. However, our analysis of 

RPX litigation data from 2007 to 2017 did not support these 

assertions. Patent litigation data did not show an increase in the 

monthly average number of patents asserted per case among cases 

involving one or more business method patents.69

• The CBM program has decreased the value of business method 

patents. The CBM program has decreased the value of business 

method patents generally, even beyond those focused on financial 

services. Several stakeholders told us that the board’s broad initial 

interpretation of the CBM program’s eligibility requirements 

contributed to an increased risk to a wider swath of business method 

and software patents than was intended by Congress.70 Stakeholders 

told us that any patent tangentially related to financial business 

methods has been devalued because it could potentially be 

challenged under the CBM program. In addition, stakeholders said 

they believed that the threat of such challenges has decreased the 

 67A patentee owning the whole or any sectional interest in a patent may disclaim any 

complete claim or claims in the patent. 37 C.F.R. § 1.321(a). 

68Alleged infringers would have to file multiple CBM petitions to defend themselves. 

69These data do not include demand letters, which are written notices to alleged infringers 

from patent owners often in lieu of a lawsuit. Demand letters outline the scope of alleged 

infringement and often seek settlements in the form of one-time payment or a licensing 

agreement. 

70Recent Federal Circuit decisions, including Unwired Planet, LLC vs. Google, Inc. and 

Secure Axcess, LLC vs. PNC Bank Nat’l Assoc. have narrowed the understanding of the 

scope of patents eligible for the CBM program. 
Page 37 GAO-18-320 U.S. Patent And Trademark Office

value of all business method patents, including those that might 

ultimately survive a CBM challenge. Some stakeholders pointed to a 

decrease in licensing of business method patents and others 

suggested that patents have lost value on the secondary patent 

market. Available data that we reviewed, though limited, support the 

claims that patent values on the secondary market have fallen. A few 

stakeholders, however, told us that to the extent these patents have 

lost value, the devaluation is related to problems with patent quality.

Stakeholders generally agreed the effects of the CBM program on 

innovation and investment have been minimal or mostly positive. More 

specifically, stakeholders told us that the CBM program is good for overall 

innovation and investment in financial technologies in that the program 

eliminates overly broad (non-specific), low-quality patents. Stakeholders 

told us they believe the existence and assertion of overly broad patents is 

bad for innovation, in part because defending against alleged 

infringement is expensive and time-consuming, even under the CBM 

program. Assertion of overly broad, unclear, or otherwise low-quality 

patents acts much like a tax on investment, according to stakeholders. 

Stakeholders also told us that removing such patents from the 

marketplace promotes innovation because it prevents these patents from 

blocking new innovation. According to stakeholders, innovation is 

represented by the quality of the patents issued rather than the quantity. 

A large number of patents in a technology space, according to 

stakeholders, can make it difficult to innovate within that crowded space.

A few stakeholders had differing views, stating that the CBM program has 

affected some companies’ ability to protect a business model with a 

business method patent, although one stakeholder acknowledged that the 

Supreme Court’s decision in Alice has also had an effect. These types of 

comments were generally from stakeholders with company-specific 

interests, including individual patent owners and companies that have had 

patents invalidated under the CBM program. Other stakeholders, 

however, including those in the financial services industry, told us that 

innovation in their field is robust. For example, these companies are 

developing mobile-payment and blockchain technologies,71 and the 

companies have not seen any negative effects from the CBM program on 

 71A blockchain is a digital ledger in which transactions made in cryptocurrencies are 

recorded chronologically and publicly. It is a method for sharing a record of an online 

transaction in a secure and trustworthy way that allows both parties to have a copy of that 

record without either party having to maintain that record. 

Stakeholders Generally 

Agreed the CBM Program 

Has Had Positive Effects 

on Innovation and 

Investment
Page 38 GAO-18-320 U.S. Patent And Trademark Office

their ability to innovate, patent, and invest in these financial services 

technologies.72

Stakeholders generally agreed that the CBM program and the other postgrant programs have had a positive effect on patent quality, as patent 

applicants are more and more aware of what it takes to ensure a patent 

will survive a post-grant challenge. Several stakeholders highlighted extra 

steps they have taken before and during the patent application and 

examination stages to ensure their patents will stand up to any eventual 

challenges. For example, one patent owner told us how his company 

proactively worked to get its patent examined by a foreign patent office, in 

an effort to understand any quality issues with the patent, before 

submitting a patent application to USPTO. Another stakeholder told us

about an extended back-and-forth with the USPTO examiner. This 

stakeholder told us that the additional effort taken during the examination 

process resulted in a patent that is much clearer and that will be more 

likely to stand up to additional scrutiny.73

Most stakeholders told us there was value in maintaining aspects of the 

CBM program, including the ability to challenge patents on all four 

statutory grounds at the Patent Trial and Appeal Board, and many told us 

that it would be useful to expand this capability to a broader set of patents 

beyond business methods. However, there was no strong consensus 

among stakeholders for how the AIA trials should be designed in the 

future.

Stakeholders generally agreed that the ability to challenge a patent’s 

validity on subject matter eligibility grounds remains important, although 

there was not broad agreement among stakeholders regarding how far 

that ability should extend beyond business method patents.74

 72One stakeholder told us that the CBM program has resulted, in some cases, in 

companies moving away from seeking patent protection for business methods and, 

instead, using trade secrets or copyright to protect innovations, but it is not clear if this 

approach is a widespread trend. Trade secrets have the disadvantage of not allowing for 

the public to become aware of, and learn from, the inventions of others. 

73Other stakeholders told us that many small companies hire inexperienced patent 

attorneys, or try to write their patents on their own, and that this sometimes results in lowquality patents being submitted to USPTO for review. 

74More than 90 percent of CBM petitions filed in 2017 contained patent claims challenged 

on subject matter eligibility grounds. 

Most Stakeholders Said 

There Is Value in 

Maintaining Aspects of the 

CBM Program
Page 39 GAO-18-320 U.S. Patent And Trademark Office

Stakeholders we interviewed pointed to inconsistencies in how federal 

courts interpret subject matter eligibility requirements and said that 

challenges on subject matter eligibility grounds should remain an option 

at the Patent Trial and Appeal Board because of the board’s expertise 

over the courts. Some stakeholders said subject matter eligibility 

challenges were important for a wider scope of patents than just business 

methods because concerns about subject matter eligibility that apply to 

business method patents extend to software-related patents in general. In 

addition, a few stakeholders suggested that subject matter eligibility 

challenges should be available for patents in all areas of technology. The 

continued prevalence of challenges in district courts based on the 

Supreme Court’s decision in Alice, for business method patents and for a 

wider array of patents, highlights the importance of retaining the ability to 

challenge patent validity at the board on subject matter eligibility 

grounds.75

Similarly, stakeholders told us that patent clarity problems exist beyond 

business method patents.76 Stakeholders said that the federal courts and 

jurors do not necessarily have the expertise to interpret patent clarity 

requirements and that the technically trained Patent Trial and Appeal 

Board judges were better suited to make patentability determinations, 

including on clarity grounds. One stakeholder, for example, told us that 

petitioners can delve much deeper into the invalidity argument on patent

clarity grounds at a CBM trials than they can as defendants in district 

court, mostly because the board judges have the requisite technical 

expertise. In addition, many stakeholders told us that challenging patents 

on clarity grounds was also important for a much broader array of patents 

than business method patents, and some suggested that these 

challenges should remain an option for all patents challenged at the 

board. In June 2016, we reported that more than 40 percent of patent 

examiners experience pressure to avoid rejecting a patent application 

because of problems with clarity and we recommended additional steps 

 75Some stakeholders told us that Alice challenges for subject matter eligibility in the 

districts courts can be less costly and more efficient than subject matter eligibility 

challenges at the CBM program, and thus reduced the need for CBM. However, many 

other stakeholders told us that there is significant inconsistency in how Alice challenges 

are handled at the district courts, a situation that introduces uncertainty and risk. 

76More than 30 percent of CBM petitions filed in 2017 contained patents claims 

challenged on clarity grounds. 
Page 40 GAO-18-320 U.S. Patent And Trademark Office

USPTO could take to improve patent clarity.77 This suggests there are a 

potentially large number of patents, beyond and including business 

method patents, that could benefit from a second look by the board on 

these grounds, and inter partes review does not allow patents to be 

challenged on clarity grounds.

Stakeholders discussed several other topics related to the future of the 

CBM program:

• Post-grant review is not an effective substitute for the CBM

program for challenging patents on subject matter eligibility and

patent clarity grounds. Stakeholders told us that the 9-month

window, after a patent is issued, to file challenges using post-grant

review is too short to make it an effective substitute for the CBM

program. Post-grant review was established as a permanent

mechanism at the board for challenging all patents on all statutory

grounds. However, only 78 petitions have been filed for post-grant

review through September 30, 2017. According to stakeholders, few

companies have the resources to continuously monitor patent

issuance in real time. In addition, even if companies do discover

patents that are relevant to their business, companies, in general, are

not willing or able to spend resources challenging patents that may

never be used as the basis for an infringement lawsuit.78 As a result,

the public essentially does not have the ability to challenge most

patents on subject matter eligibility and clarity grounds, according to

stakeholders.

• CBM challenges should not be limited to a specific technology.

Although the CBM program was designed to address a problem

caused by a narrow set of patents, some stakeholders told us they are

troubled by CBM’s focus on patents for financial services and

products. Stakeholders said that singling out such services and

77For example, we recommended that USPTO consider requiring applicants to include 

glossaries to define unclear terms. 

78Specifically, because there are thousands of patents issued per week, companies would 

have to actively track issued patents to determine which are relevant to their technology 

space, and very few companies have the resources for this. Many stakeholders, in fact, 

told us such tracking is logistically impossible, especially for small companies. In addition, 

one stakeholder pointed out that patents are asserted, on average, more than 7 years 

after issuance. Stakeholders told us that it is not possible to know, in the short time period 

when post-grant review is available, if a patent will ever be asserted. Stakeholders told us 

that it is not practical, from a business perspective, for companies to challenge any and all 

patents that might, someday, be asserted against them. 
Page 41 GAO-18-320 U.S. Patent And Trademark Office

products is unfair and that the need to determine eligibility for review 

created uncertainty for patent owners. In addition, some stakeholders 

told us that the singling out of a particular subset of patents may raise 

questions about compliance with an international treaty.79

• Concerns remain about business method and software-related 

patents. Some stakeholders told us the patents that the CBM 

program was designed to address have largely been addressed by 

improved examination at USPTO, reducing the need for the program. 

In addition, some stakeholders told us that the CBM program, which 

was designed to be temporary, had largely succeeded in addressing 

the problems with business method patents. However, other 

stakeholders told us that patents of questionable validity, including 

business method and software patents, continue to be issued by the 

patent office.80 Given these continuing concerns over software-related 

patents, several stakeholders suggested that one viable option for the 

future of the CBM program is to expand its eligibility beyond financial 

services patents to cover all software-related patents. In addition, in 

contrast to the inter partes review program, the CBM program allows 

any form of prior art to be used to challenge a patent on novelty or 

obviousness grounds. This broader allowance for prior art is important 

because many software and business method patents were preceded 

by prior art not found in existing patents or printed publications.

In 2016, we reported on a number of patent quality challenges at USPTO 

and made several recommendations to help improve the quality and 

clarity of issued patents. In that report, we estimated that almost 70 

percent of patent examiners did not have enough time to complete a 

thorough examination of patent applications given a typical examiner’s 

workload. Given these time constraints and other patent quality 

challenges, the Patent Trial and Appeal Board has provided a means to 

challenge low-quality patents after they have been issued. Stakeholders 

generally agreed that the CBM program has reduced lawsuits in the 

 79The Trade-Related Aspects of Intellectual Property Rights treaty obligates the United 

States to make patent rights available and enjoyable without discrimination as to the field 

of technology of any invention. Although opinions varied, two stakeholders told us that 

there is concern as to whether the CBM program violates this treaty. 

80These comments are in keeping with our findings in GAO-16-490. Specifically, we 

reported that software-related patents were more likely to be unclear and overly broad and 

the majority of defendants in patent infringement suits were involved suits with softwarerelated patents each year from 2009 through 2015. 

Conclusions
Page 42 GAO-18-320 U.S. Patent And Trademark Office

federal courts involving business method patents, and many stakeholders 

were in favor of maintaining aspects of the program.

The board has a track record of issuing timely decisions that have largely 

been upheld by the U.S. Court of Appeals for the Federal Circuit. 

However, the board does not have guidance, such as documented 

procedures, for reviewing trial decisions and the processes that led to the 

decisions. Without developing guidance, such as documented 

procedures, that outlines the steps USPTO will take to review the Patent 

Trial and Appeal Board’s decisions and the processes that lead to 

decisions, USPTO cannot fully ensure that it is meeting the objective of 

ensuring consistency of its decisions.

We are making the following recommendation to USPTO:

• The Director of USPTO should develop guidance, such as 

documented procedures, for judges reviewing the Patent Trial and 

Appeal Board’s decisions and the processes that lead to the 

decisions. (Recommendation 1)

We provided a draft of this report to the Department of Commerce for 

review and comment. In its comments, reproduced in appendix II, the 

department agreed with the recommendation and stated that it has begun 

taking steps to address it, including drafting a formal, written charter that 

documents procedures for reviewing board decisions. The department 

further stated that it intends to address the recommendation within one 

year. In addition, it provided technical comments, which we incorporated 

as appropriate.

Recommendation for 

Executive Action

Agency Comments
Page 43 GAO-18-320 U.S. Patent And Trademark Office

As agreed with your office, unless you publicly announce the contents 

of this report earlier, we plan no further distribution until 8 days from the 

report date. At that time, we will send copies of this report to the

appropriate congressional committees, the Secretary of Commerce, and

other interested parties. In addition, this report will be available at no

charge on the GAO website at http://www.gao.gov. 

If you or your staff members have any questions about this report, please 

contact me at (202) 512-3841 or neumannj@gao.gov. Contact points for 

our Offices of Congressional Relations and Public Affairs may be found 

on the last page of this report. Key contributors to this report are listed in 

appendix III.

Sincerely yours,

John Neumann

Director, Natural Resources and Environment
Appendix I: Objectives, Scope, and

Methodology

Page 44 GAO-18-320 U.S. Patent And Trademark Office

Our objectives were to (1) describe the extent to which the Patent Trial 

and Appeal Board’s Transitional Program For Covered Business Method 

Patents (CBM program) has been used to challenge patents, and the 

results of those challenges; (2) examine the extent to which USPTO

ensures timeliness of trial decisions, reviews decisions for consistency,

and engages with stakeholders to improve its administrative proceedings

for the program; and (3) discuss stakeholder views on the effects of the

CBM program and whether it should be extended past its scheduled

September 2020 sunset date.

To describe the extent to which the CBM program has been used to 

challenge patents, and the results of those challenges, we obtained data 

on board proceedings from two companies—RPX Corporation and 

Unified Patents—that included information on all of the board’s

proceedings from September 2012 through September 2017. RPX and 

Unified Patents collect, compile, and analyze data from the U.S. Patent 

and Trademark Office’s publicly available data system. Both companies 

manually review these data to verify variables and to manually code 

additional information from other publicly available board documents. We 

conducted data quality testing, interviewed relevant officials, and 

reviewed relevant documentation for the data. We found these data to be 

sufficiently reliable for the purposes of our reporting objectives. 

For petitions filed at the board, data from RPX and Unified Patents 

include information on the patent in dispute, including its U.S. patent 

number, petition-filing dates, and trial institution and final written decision 

dates. RPX data include the patent claims challenged and the statutory 

grounds on which they were challenged. In addition, RPX data includes 

which patent claims were instituted for trial on which statutory grounds, 

and which patent claims were ruled unpatentable on which statutory 

grounds. RPX and Unified Patents provided the names of the petitioners 

and patent owners, as well as whether the patent owner is an operating 

company or one of several classifications of non-practicing entities. RPX 

also provided the names of the parties’ attorneys. We categorized which 

program each petition was filed under (CBM, inter partes review, or postgrant review) to enable comparisons across programs. 

We used the data from Unified Patents on Patent Trial and Appeal Board

proceedings to supplement the RPX data for outcomes of each petition. 

Specifically, we compared the Unified Patents’ outcome variable—which 

describes the final outcome of the proceeding—and the RPX outcome 

variable to create a new variable that reflects the full available information 

about each petition’s outcome. There were some—fewer than 3 percent 

Appendix I: Objectives, Scope, and 

Methodology
Appendix I: Objectives, Scope, and 

Methodology

Page 45 GAO-18-320 U.S. Patent And Trademark Office

of cases—where the two variable values were inconsistent with one 

another. In these cases, we reviewed trial documentation to determine 

the correct value for the outcome variable. The Unified Patents outcome 

variable sometimes had more information than the RPX variable. For 

example, cases that were terminated because of settlement were 

identified as settlements in the Unified Patents data, but not in the RPX 

data. We retained the additional detail for our analysis.

To determine trial outcomes at the patent level, we analyzed the petition 

in which the patent proceeded the furthest in the CBM process. For 

example, if a patent was challenged under the CBM program multiple 

times—for example, three times—and two petitions were not instituted to 

the trial phase and one was instituted and then settled before the board 

judges issued a final written decision, we used the petition that proceeded 

the furthest for our patent-level analysis of outcomes. In this way, we 

were able to report what happened to patents under the CBM program, 

while not double-counting those patents that were challenged more than 

once. 

To examine the extent to which USPTO ensures trial timeliness, reviews 

past decisions for consistency, and engages with stakeholders to improve 

its administrative proceedings for the program, we reviewed the America 

Invents Act (AIA); USPTO’s strategic plan; the Patent Trial and Appeal 

Board’s policy and guidance documents, including the Trial Practice 

Guide; and we interviewed board officials on several occasions. We 

compared USPTO’s efforts to review decisions for consistency against 

USPTO’s current strategic plan as well as Standards for Internal Control 

in the Federal Government (commonly referred to as the “Green Book”).1

In addition, we reviewed publicly available information documenting the 

steps the board takes to engage with stakeholders, including 

documentation of webinars, judicial conferences, and roundtable

discussions. 

To obtain stakeholder views on the effects of the CBM program and 

whether it should be extended, we conducted semi-structured interviews 

with 38 stakeholders knowledgeable about the CBM program. To identify 

these stakeholders, we first identified the following sets of stakeholder 

groups: petitioners and patent owners who have been involved with CBM 

 1

GAO, Standards for Internal Control in the Federal Government, GAO-14-704G 

(Washington, D.C.: September 2014).
Appendix I: Objectives, Scope, and 

Methodology

Page 46 GAO-18-320 U.S. Patent And Trademark Office

trials; attorneys who have represented clients with board proceedings; 

industry trade groups; academic and legal commentators; public interest 

groups; and venture capitalists. We identified petitioners, patent owners, 

and attorneys who had been involved in board proceedings using data 

from RPX Corporation and Unified Patents. We ranked petitioners, patent 

owners, and attorneys based on how many CBM cases they had been 

involved with, and how many inter partes review cases they had been 

involved with in front of the board. We then requested, via email, 

interviews with several stakeholders from each stakeholder group, and 

began our semi-structured interviews as stakeholders accepted our 

invitation. During our initial set of semi-structured interviews, we identified 

additional stakeholders through an iterative process known as a “snowball 

selection method,” whereby during each interview we solicited names of 

additional stakeholders it would be useful to interview.2 As we obtained 

the names of additional stakeholders, we requested additional interviews, 

conducted interviews, and solicited additional stakeholders, until we (a) 

had interviewed four or more stakeholders from each identified 

stakeholder group and (b) found that stakeholder responses were, in 

general, commonly describing the same broad themes and relevant 

points that previous stakeholders had described about the topics we were 

discussing. In total, the stakeholders we recruited and interviewed did not 

form a random, statistically representative sample of all relevant 

stakeholders. As such, we cannot generalize the results of the interviews. 

However, these stakeholder groups and the stakeholders we interviewed 

provide a broad spectrum of informed opinions on the CBM program. 

Of the 38 stakeholders interviewed, 14 had previously petitioned CBM 

against more than one patent owner, and many of those had also 

petitioned an inter partes review. In addition, we interviewed 6 patent 

owners that had been involved in multiple CBM trials. We also 

interviewed attorneys from 5 law firms that have represented multiple 

petitioners and patents owners in CBM cases. In addition, we interviewed 

officials from 4 trade groups, 4 venture capital firms, and 5 academics 

and legal commentators, all of whom had interest and expertise in the 

CBM program. 

During our semi-structured interviews, we asked stakeholders the 

following three broad questions: 

 2

We repeated this process during our interviews until the referrals were mostly to 

stakeholders we had previously interviewed or contacted. 
Appendix I: Objectives, Scope, and 

Methodology

Page 47 GAO-18-320 U.S. Patent And Trademark Office

• How much and in what way has the existence of the CBM program 

affected patent assertion strategies since 2012? 

• How much has the CBM program influenced investment decisions 

and innovation for technologies related to financial-services business 

methods? 

• Should the CBM program be allowed to expire in September 2020 or 

should it be renewed?

For each question, we used a consistent set of follow-up prompts to 

ensure that we fully covered all aspects of each topic with the 

stakeholders, that we received complete answers, and that we were able 

to accurately record the responses. While we asked every stakeholder 

each of the three questions, we did so keeping in mind the particular 

background and experience of each stakeholder because experience and 

expertise differed across our wide range of stakeholders. As such, during 

each interview, we focused on the topics where the stakeholder had the 

most experience, expertise, or knowledge. 

To systematically analyze the information we collected during our semistructured interviews, we used qualitative analysis software to group the 

responses into categories and themes. All information was individually 

coded by two analysts. We classified individual responses according to 

these broad themes, which generally corresponded to our main 

questions: 

• The effect of the CBM program on patent assertion and litigation.

• The effect of the CBM program on innovation and investment in 

business methods.

• The future of the CBM program. 

Within each broad theme, we labeled and organized sub-themes. We 

established the sub-themes by identifying natural clusters of stakeholder 

responses. 

We analyzed the categorized themes and sub-themes to draw inferences 

about the effectiveness of the CBM program by taking the following steps: 

We first examined the amount and nature of agreement and 

disagreement between responses within each theme and sub-theme. We 

then assessed the strength of the arguments supporting each categorized 

response, and considered factors including the number of stakeholders 

who discussed a topic, including the strength of the rationale for each 

viewpoint and other supporting evidence provided. We also considered 

the way in which stakeholders’ interests could influence their 

perspectives.
Appendix I: Objectives, Scope, and 

Methodology

Page 48 GAO-18-320 U.S. Patent And Trademark Office

In this report, we present the themes with the strongest and most 

consistent support based on rationale including the prevalence of each 

argument, the presence of credible evidence in support of statements, 

and the amount of consistency and corroboration of themes across 

stakeholders. Because stakeholders do not make up a defined population 

that we could sample from, and because the stakeholders we interviewed 

had a wide range of experience and expertise, we did not tally up similar 

responses and do not present stakeholder responses based solely on 

how many stakeholders agreed or disagreed with a given statement. 

We conducted this performance audit from November 2016 to March 

2018 in accordance with generally accepted government auditing 

standards. Those standards require that we plan and perform the audit to 

obtain sufficient and appropriate evidence to provide a reasonable basis 

for our findings and conclusions based on our audit objectives. We 

believe that the evidence obtained provides a reasonable basis for our 

findings and conclusions based on our audit objectives.
Appendix II: Comments from the Department 

of Commerce

Page 49 GAO-18-320 U.S. Patent And Trademark Office

Appendix II: Comments from the Department 

of Commerce
Appendix II: Comments from the Department 

of Commerce

Page 50 GAO-18-320 U.S. Patent And Trademark Office
Appendix III: GAO Contact and Staff 

Acknowledgments

Page 51 GAO-18-320 U.S. Patent And Trademark Office

John Neumann, (202) 512-3841 or neumannj@gao.gov

In addition to the contact named above, the following individuals made 

contributions to this report: Rob Marek (Assistant Director), Kevin Bray, 

Mark Braza, Richard Burkard, Stephanie Gaines, Michael Krafve, Cynthia 

Norris, Ardith Spence, Sara Sullivan, and Sarah Williamson.

Appendix III: GAO Contact and Staff 

Acknowledgments

GAO Contact

Staff 

Acknowledgments
Related GAO Products

Page 52 GAO-18-320 U.S. Patent And Trademark Office

Intellectual Property: Patent Office Should Define Quality, Reassess 

Incentives, and Improve Clarity. GAO-16-490. Washington, D.C.: June 

30, 2016.

Intellectual Property: Patent Office Should Strengthen Search Capabilities 

and Better Monitor Examiners’ Work. GAO-16-479. Washington, D.C.: 

June 30, 2016.

Intellectual Property: Assessing Factors That Affect Patent Infringement 

Litigation Could Help Improve Patent Quality. GAO-13-465. Washington, 

D.C.: August 22, 2013.

U.S. Patent and Trademark Office: Performance Management Processes. 

GAO-10-946R. Washington, D.C.: September 24, 2010.

Intellectual Property: Enhanced Planning by U.S. Personnel Overseas 

Could Strengthen Efforts. GAO-09-863. Washington, D.C.: September 30, 

2009.

Check 21 Act: Most Consumers Have Accepted and Banks Are 

Progressing Toward Full Adoption of Check Truncation. GAO-09-8. 

Washington, D.C.: October 28, 2008.

U.S. Patent and Trademark Office: Hiring Efforts Are Not Sufficient to 

Reduce the Patent Application Backlog. GAO-08-527T. Washington, 

D.C.: February 27, 2008.

U.S. Patent And Trademark Office: Hiring Efforts Are Not Sufficient to 

Reduce the Patent Application Backlog. GAO-07-1102. Washington, 

D.C.: September 4, 2007.

Intellectual Property: Improvements Needed to Better Manage Patent 

Office Automation and Address Workforce Challenges. GAO-05-1008T. 

Washington, D.C.: September 8, 2005.

Intellectual Property: Key Processes for Managing Patent Automation 

Strategy Need Strengthening. GAO-05-336. Washington, D.C.: June 17, 

2005.

Intellectual Property: USPTO Has Made Progress in Hiring Examiners, 

but Challenges to Retention Remain. GAO-05-720. Washington, D.C.: 

June 17, 2005.

Related GAO Products

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