BPAI Appeals Cyclic Decision Making

By Dennis Crouch

The USPTO's Board of Patent Appeals (BPAI) has an incredibly large backlog of ex parte appeals pending – more than 25,000. In 2006, that figure was less than 1,000 pending appeals. Since then, the backlog has grown month-after-month-after-month. Cases being decided by the BPAI now were fully briefed more than two years ago, and began the appeal briefing process more than three years ago. Most of those are on applications filed at least five years ago with priority claims reaching back even further. The current USPTO solution is to hire more Administrative Patent Judges – 100 new judges this fiscal year with at least that many arriving next year. I agree that this is an important part of the solution. However, in my view simply hiring more judges is insufficient.

The following chart looks at the number of BPAI decisions each month. The pattern reveals the results of a performance rating system (i.e., quota system) used to judge the Judges. Ordinarily, BPAI judicial performance is reviewed two times per year, and that process is reflected in a systematic incentive for the judges to do more work at the end of the fiscal year (September) and at the midpoint (March). The chart shows those months as the high-points for BPAI output and the subsequent months as low-points.

It seems to me that the current cadre of Administrative Patent Judges have proven that they have the capability of increasing their throughput by 60% or more in any given month. But, the Judges only act on that capability when properly motivated. I hate to play the "if I were manager" game, but once these phenomena are recognized, a likely general solution is fairly obvious – provide motivation for the Judges to more often work to their potential. Economists have shown that people almost always act in their own self-interest – that's why personal incentives work. However, in a team environment, personal incentives are rarely sufficient. Most highly successful teams also rely on team and other goal oriented incentives that suggest a culture of success. In my mind, the chart showing high-effort-as-deadline-approaches suggests a commitment to personal achievement but also a lack of commitment to the broader timeliness goal of ex parte patent appeal administration. Of course, timeliness is only one variable in the time-quality-cost equation, and the other important elements cannot be ignored.

As the PTO moves to more than double the size of the Board, now is the time to make structural changes to ensure a better future for this important segment of the Office.

Note - A key feature of the chart above is that the figures for FY2012 are significantly higher than for prior years. Unfortunately, the increase in productivity is still only slowing the growth of the backlog. With the increase in judges, I expect for the backlog to begin declining by the end of this fiscal year. Further, once implemented, the proposed increased appeal fees will also tend to reduce appeals filed.

146 thoughts on “BPAI Appeals Cyclic Decision Making

  1. Inland Northwest Realty website featuring real estate in Northern Idaho. Inland Northwest Realty for buying and selling real estate in Bonner, Boundary, and Kootenai Counties of Northern Idaho.

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  2. I’ve heard from people that actually write those decisions that putting out 2 a week and reviewing 4 a week is hard work.

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  3. 10 years ago I applied to a position at the University of Minnesota.

    The application was going nowhere, so I forgot about it and moved on.

    ALMOST 3 YEARS LATER I get a telephone call one day, informing me that I had been selected to interview.

    “For what?”, I asked. I had, of course, entirely forgotten about the application and moved on with my life. I just laughed and told them to take a hike.

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  4. as was the case with the 120 argument

    LOLZ at 6 on the 120.

    I recall you getting spanked big time on this at the Patent Hawk’s place. Nice to see you finally admit that 120 was so ‘conclusive.’

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  5. Try: 35 U.S.C. 112 paragraph two.

    The Office (under Tafas) is forbidden to make rules affecting substantive rights. Your addition affects the substantive rights as outlined under 35 U.S.C. 112 paragraph two by increasing the requirement for patentability. This action is not allowed to be made by this administrative agency.

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  6. Show me the statute that forbids requiring a definition as was the case with the 120 argument and I’ll gladly say you win the day.

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  7. Oh, right, the “wide leeway” of the PTO’s “inherent authority” argument. Gee, I seem to remember Mr. Toupin arguing in front of the Fed. Cir. that In re Bogese gave the PTO “wide leeway” in its “inherent authority” to limit the number of continuations an applicant could file under section 120. I also seem to remember J. Prost stifling a laugh when Mr. Toupin made that ridiculous argument.

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  8. Keep positive, dude. If they don’t take you, in 5 years you’ll look back and say “good.” If they do take you, in 5 years you’ll look back and say “good.”

    pssst … I’ll lend you my Purple Heart for a 10-point boost in your score. Meet you at the corner news-stand. Bring cash.

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  9. I apologize for the double posting. Didn’t see that the comments ran onto a new page. Gets me every time.

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  10. Sounds to me like you must be a white male over 40yo.

    Not a chance.

    Come to Canada! Always hiring hard working white guys. Bring your chain saw.

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  11. I keep losing my reply comment to you. Maybe it was too long. My main point is that they want highly qualified and experienced people and then when you interview, they basically say why would you come and work for that amount of money? Look if it was just money, I would never have worked for the PTO in the first place! Examiners made precious little when I started in 1986.

    I LOVE being an examiner! Much more than being an attorney. I actually love searching, but that is kind of geeky so I shouldn’t talk about that.

    Mostly I learned that I could basically work out most case issues by calling the attorney and making a deal. I had great SPEs who trusted my knowledge and judgment. Those were the days! Most Examiners I deal with seem a bit micromanaged which is sad.

    OK, will try to post this before it is eaten by the system.

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  12. Sorry AAA JJ, Michael R Thomas is busy at the moment. Perhaps Sarah will translate 6-speak into something recognizable.

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  13. So like 6 to pass the buck.

    It all comes downto one thing. If you want a quality examination, you need an examiner capable of giving a quality examination.

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  14. Sorry ebiumfiber, got your point and inartfully offered the only thing I could see as a remote negative. I wish you well and good luck getting into the system (and changing it from within).

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  15. Who are the “big boys” who are applying? I would think with 25 years of experience I would somehow fit into the “big boy” category (despite being a chick and not a boy).

    I’m guessing OPM leaned on them for a new vacancy announcement as the old one had KSA-type questions that are supposedly no longer permitted.

    Whatever- the new vacancy announcement favors my qualifications since the questions are multiple choice and I get to pick the highest level for each question (since I have all that experience, supervise other attorneys, teach patent law courses, etc. etc.).

    As far as staying- I stayed a lot longer than most of my peers with law degrees. And my leaving, had they bothered to ask, had a lot to do with an ex-husband patent examiner in the same group- now retired. He was eager that I move on after law school and so I did. Which is why I came back as an electrical rather than a chemical examiner (and also since I mainly did electrical work). But that also did not turn out well, although it was an amicable divorce from a short marriage. So an unusual fact pattern, had they been interested in knowing why I left or if they had concerns about staying for the future.

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  16. Yes, that is what they want- and how long would such a person stay? There is no litigation-style work at the Board so such people would leave in a heartbeat- sure, send the litigators off to the Solicitor’s Office- they DO argue cases at the CAFC. But the Board? I think they asked about cross-examining witnesses and such in the previous vacancy- what witnesses are cross-examined at the Board. Huh? Whatever. Wouldn’t it make sense to have people who have been examiners AND attorneys? People who have seen both sides of the process? Sigh. But not going to beat my head against the wall over this any more because I really don’t think they know who or what they want. It’s just easier to collect resumes (underwear gnomes, anyone?) than to actually hire and integrate new people into the organization. It makes me sad because, in the old days, the best and most experienced examiners became Board members and they were really good- I knew a few personally before they become Board members and had nothing but respect for them. I can’t say I am impressed in that way anymore…

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  17. If, according to a court, it might already be reasonble for us to require information about an explanation of technical material in a reference I hardly doubt that it is beyond the scope of the office’s rulemaking authority to expand the rule to include instances where a requirement of an explanation of the definition of a term. Indeed, we may already have that authority under the current rules although we are not currently encouraged to use such a procedure.

    Indeed, in the course of making their holding, the court noted that the Office is authorized under section 1.105 to require any information that is either relevant to patentability under any nonfrivolous legal theory, or is reasonably calculated to lead to such relevant information. A definition for an ambiguous term is certainly information that is relevant to patentability under any and all nonfrivolous legal theories.

    Also in Star Fruits Newman, champion of what is no doubt your ta rd-view of the lawl, is soundly rejected on all fronts. But that is generally only notable only for lols, not pertaining to the merits of this discussion.

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  18. What is so hard to understand? I mean, operating with a tar d brain such as your own I can understand how it might be mildly difficult but still. Exerting even the smallest efforts should suffice.

    In star fruits the court noted that the office utilized its rulemaking authority to make explicit the inherent authority it already possessed. Through a similar rulemaking the same might be achieved with respect to the suggestion made by Michel. The courts, having already given the office a wide leeway in Star Fruits may well see fit to do the same in similar rulemaking designed to implement his suggestion. And the office may well benefit from Star Fruits having shown the judiciary is willing to give the PTO a wide berth of authority in making rules.

    I’m not really sure how this is so hard to see, since it is so blatant, but I will presume you have simply forgotten what happened in Star Fruits.

    So here:

    link to ll.georgetown.edu

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  19. Umm, who ever sees the depositions? It was all for one optical systems company that I wrote a series of patents for, pre-IPO. The first patent, filed in 1995, had the last continuation of some kind filed just last year. They have been widely licensed and used against competitors. So I really doubt I have a bad rep about that. One Markman opinion had chunks of paraphrasing from my non-infringement opinions…the point is that I am pretty familiar with litigation, not that the Board does any litigation!!

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  20. My mother is begging me NOT to take the job if it is offered since she is so horrified about the process…

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  21. “I said that the executive might benefit from star fruits if it tried to implement such a changing of the rule.”

    There’s no keeping up with “reasoning” like this.

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  22. “I said that the executive might benefit from star fruits if it tried to implement such a changing of the rule.”

    There’s no keeping up with “reasoning” like yours. If there’s anybody who posts here who has any idea what you could possibly be talking about, please speak up.

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  23. The dictionary? You clearly have no idea how to do your job correctly.

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  24. “How are the facts in that case even remotely applicable to a scenario where an examiner ”

    Did I say that the facts in that case even remotely are “applicable” to a scenario where an examiner anything. I said that the executive might benefit from star fruits if it tried to implement such a changing of the rule.

    I know you’re 98-99% tard, but try to keep up.

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  25. “So the backlog is caused by Applicants constantly having to tell you that your BUI is U?”

    Pretty sure that ambiguous terms have nothing to do with BUI or BRI. Maybe you should consult your dictionary so you will know why.

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  26. I agree, those accountable, the officers of the court known as lawltards, have been totally asleep at the wheel.

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  27. Idk about that, I may have called him a tard a time or two, but it seems that he is coming a long way from legal-induced tardedness to a thoughtful member of the patent community. Remember, as a judge he was tasked with something totally different than he is now tasking himself with. Perhaps, in some small way, my calling him a tard because of some decision that he was forced to write in some fashion due to precedent helped him see that it was time for him to leave the judgeship and advocate for better solutions to the issues facing us than the judiciary was able to produce.

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  28. Re-posting this. Must have got inadvertently deleted.

    Babbel Boy said…
    Let’s run some back-of-the-pay-envelope numbers here.

    Dennis says that the PTO is hiring 200 APJs over 2 years and that will double the number they now have, which, by my calculation must mean there are now 200 active APJs. (I got that by multiplying 200 by 2 to get the the final number and then taking half of that to get what they have now. With me so far?)

    Look at the graph. Take a high point, say March. 800 ex parte decisions. 200 APJs. Divide.

    What?? Are these b’crats only putting out 4 ex parte decisions per capita per month???

    No. It’s not quite that bad.

    Dennis’ data are not per capita. Those 800 decisions are really 2400 individual “decisions” bundled in 800 packages of 3 APJ decisions each.

    So, if we assume each APJ contributes the same amount of time to each decision – which is bonkers crazy but giving them the benefit of the doubt – then the per capita output is 12 ex parte decisions per capita per month. Tops. The average is probably closer to 8. A bit over 2 decisions per 40 hours = 20 hours per APJ per decision.

    In reality, only one APJ writes the decision, so the simplifying assumption that all three contribute equally is, well, as I say, bonkers crazy.

    In my wildest guess I would not have said it could take more than a day, much less half a week, to dispose of one appeal. I have never seen a decision that went much, if at all, beyond the briefs, which can be read in 45 minutes. Both of them.

    Are the data screw’d, or are my calculations, or is this the laziest group of lawyers on the planet. What other responsibilities to these people have?

    (BTW: are they hiring yet??)

    Reply Feb 15, 2012 at 07:58 PM

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  29. had the office noticed and defined a single word or two.

    Sounds like those A C C O U N T A B L E have been asleep at the wheel.

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  30. and they’re probably worried you’ll join on and then quit

    Reminds me, does anyone have the examiner turnover rates the last time a “hire-us-out-of-a-backlog” approach was taken?

    How well did the approach work?

    As Hal Wegner might chime in, at least the rate of things getting worse is almost under control…

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  31. “That way they may benefit from Star Fruits.”

    How are the facts in that case even remotely applicable to a scenario where an examiner “demands” that an applicant provide a definition for an allegedly ambiguous claim term?

    I see you’ve been well “trained” in the PTO-style of case law citation.

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  32. “Soooo… it sounds like they started getting applications and now they’re seeing the big boys start applying…”

    U r so dum.

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  33. “What else do I need to do to qualify? The interview was a mock hearing where I had 15 minutes to monologue my qualifications and then there were 5 minutes of rebuttal as to why they should not hire me- they said that I would not be attracted by the salary- kind of an inappropriate question because the salary is posted- and this is the agency touting work/life balance!!”

    As anyone that is looking for a “permanent” hire is looking for they’re looking for someone that will stick around, and they’re probably worried you’ll join on and then quit. It seems from your brief mention of your record that is what you’ve been doing.

    On the other hand, perhaps they’re looking at your record and thinking you are more material to become a CAFC judge instead. Who knows?

    Even so, you’ll probably get the job. Maybe you should have told them a little bit about why you thought this job in specific was perfect for you for at least the next 10 years.

    “These are some very fine people who would make even better APJs that I would so I have no idea why their applications were tossed.”

    Did you check the terrorist watch list? Also, have they been prosecuting “software” or “business method” applications? As that is the rough equivalent to being a terrorist in the patent field either of those might be a problem.

    “But now the whole process seems to have started over with a completely different set of questions and they are NOW asking for 10-15 years of experience.”

    Soooo… it sounds like they started getting applications and now they’re seeing the big boys start applying and all of a sudden your app doesn’t look as good. Sorry brosensky, sounds like they did exactly what they told you they were looking to do.

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  34. So the backlog is caused by Applicants constantly having to tell you that your BUI is U?

    Maybe you should actually try using BRI.

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  35. The executive can exercise its inherent authority to pass a rule allowing such a procedure and let it have binding effect before the office at least, the courts would have to play along of course after issuance.

    Likewise, they could just amend the “requirement for information” section of the rules already on the books. That way they may benefit from Star Fruits.

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  36. “The comment on litigation is PURE speculation, at best. Trust me, litigators will ALWAYS find terms they find ambiguous.”

    Whether or not they can always find another you is irrelevant to whether or not taking out a few key ones in patents with very ambiguous terms being used is wholly irrelevant. One can barely spit without hitting a case that would have been resolved from the outset had the office noticed and defined a single word or two.

    “Also, explain to me how defining “a few key ambiguous terms” would reduce the backlog?”

    Not having to continually reject certain apps because of ambiguous terms being used and them having to constantly come back and say “nuh uh that’s totally not what we meant” while being allowed to never say what they DID MEAN (and that nonsense does go on) will most certainly assist in lessening the backlog.

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  37. Sure. There’s the issue of work/life balance (which the PTO touts very prominently in its job postings), the ability to live pretty much anywhere you want and work from home, and the knowledge that there is zero accountability and liability. Do you think the APJ’s who got Leithem, Stepan, In re Klein, etc. colassally, phenomenally, and outrageously wrong faced any consequences for the truly crxppy work they put out in those cases? I highly doubt it. They’re still there, getting paid. What’s that worth to you? If you f’ed up a client’s work as badly as those APJ’s f’ed up those decisions, would you still be getting paid?

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  38. Your experience is typical of my interactions with the public sector–lots of highly-principled policy pronouncements, but when the time comes to actually DO something, the failure is palpable.

    But, I will re-iterate: In the public services as they are currently conceived and implemented, THERE IS NO COST OF FAILURE.

    The costs of failure are all externalized.

    In fact, failure is often rewarded.

    Precisely what incentive do you think there is for the PTO to expeditiously review your application, or to stay in touch with you as they promised?

    There is absolutely no individual accountability in the public service, in any meaningful sense–and where the rubber hits the road, “the government” is represented by an individual, or a small number of individuals–an examiner, for instance, or an interview committee, or a diversity manager, or a meter maid.

    Because elected representatives have over decades proven themselves incapable of effectively negotiating under a collective bargaining paradigm, for whatever reason, a viable attempted solution is to remove that paradigm and replace it with another, in whole or in part–which is what we see slowly happening in various jurisdictions around the country.

    Although government services will never be offered in any sort of a competitive environment, there are ways that delivery of those services can be improved, and be made more efficient, and part of any real solution must address the individuals at the individual level.

    At this point, you should ask yourself if you really want to be enmeshed in the type of environment that is now providing to you such a low level of convoluted “service”–I have been there, and I personally don’t need to be enmeshed in it again. It is stacked with a certain “kind of person”, which in my experience is as much the result of a selection effect as of anything else.

    Be warned–what you are experiencing in the process of application IS ONLY THE BEGINNING.

    I hope you make the best decision for yourself.

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  39. There were several GROSSLY unqualified APJ’s hired in April-May 2011. So unqualified that it should have been a scandal. I guess the thought now is to have the pendulum swing as far in the opposite direction as possible and not hire anybody who hasn’t argued at least 10 cases before SCOTUS.

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  40. The EPO approach, of writing a prior art objection on the back of a BRI, is indeed strikingly effective, especially on cases written in the USA. That’s because Europe does not rely on File Wrapper Estoppal. Without the crutch of FWE, the claim just doesn’t make it to issue until it, standing alone, is clear in itself.

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  41. His answer – “not my problem.” That was very telling.

    Telling of what? That one administrator doesn’t solve every problem on demand?

    Stoll was a hard worker and a straight shooter. The implication here that he didn’t care about this particular problem paints a picture that does not fit the man I know.

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  42. I can quote chapter and verse from Walker on Patents

    YAWN. retread canned discussion like from a million threads…

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  43. held that claims using functional terms at the point of novelty were indefinite

    YAWN. retread canned discussion like from a million threads…

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  44. Nope- I have been interviewed and my application is in permanent limbo while they “get more applicants” (their response to my constant requests for the application status). 25 years of experience as an attorney and an examiner in chemical and electrical groups (two different stints). Have worked extensively in electrical, chemical, and mechanical prosecution, opinion work, and litigation support. Have an LLM in IP law and high grades for all my degrees. Perfect “500″ performance reviews as an Examiner (when that was the rating scale), great production, plenty of appeal and interference experience. Even applied for the new Detroit positions. Also applied to the completely NEW vacancy announcements which look very different from the old ones.

    Not sure what they are waiting for- they even are hiring retirees for double dipping rather than picking “young blood” such as my merely 47-year-old self.

    Have had highly experience friends who didn’t even make it to interview (at least I got that far).

    Whatever. Maybe they are waiting for the reincarnation of Judge Rich before they can hire.

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  45. AND been deposed numerous times about patents that I wrote that were involved in litigation.

    Not to read too much into this, but maybe you have a bad rep associated with the personal connection…

    Aside from that, good luck to you (and others as you indicate).

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  46. So should every spec essentially be a thesaurus? Is that what he needs to construe a claim term?

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  47. Isn’t that the same CJ you’ve called a tard so many times on this site before?

    Please do stand with him. He could use the company.

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  48. “AAA JJ informs us above that there’s nothing for examiners to do during the first biweek of October.”

    That’s not what I wrote. I wrote that everybody at the PTO goofs off the first bi-week of the FY.

    You have the reading comprehension of a patent examiner. Maybe it’s time for you to call it a day.

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  49. During a Q&A at a CLE event last March, I asked former Commissioner Stoll what was being done to address this problem. His answer – “not my problem.” That was very telling.

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  50. I applied to be an APJ back in September for different technologies. Was told I was qualified and even interviewed in November. 25 years of experience- 6+ as an examiner (one stretch as chemical, one seven years later as electrical). An LLM in IP law, high grades for undergrad, law school, and LLM. Worked as in-house counsel, law firm, and the last 9 years in Asia (but doing US and foreign prosecution). I am still being “considered” but they are saying they need to gather MORE applications before they can make any decisions! Lots of questions about litigation (depositions, discovery). Does any of that happen at the Board? Not the Board I know. But I have been actively involved in litigation support AND been deposed numerous times about patents that I wrote that were involved in litigation.

    In addition to my undergraduate engineering degree (MIT, GPA 4.7/5.0) I am doing a communications technology bachelor’s degree in my “spare time” focusing on wireless networks (computer and mobile phone) and network systems. Most of this tech was not around when I graduated in 1986.

    What else do I need to do to qualify? The interview was a mock hearing where I had 15 minutes to monologue my qualifications and then there were 5 minutes of rebuttal as to why they should not hire me- they said that I would not be attracted by the salary- kind of an inappropriate question because the salary is posted- and this is the agency touting work/life balance!!

    They have completely re-done the vacancy announcements to make experience count for something- it seems to me the system was geared to hire ex-CAFC clerks. I am sure these are people with many skills but there is something to be said for having actual prosecution experience.

    I even complained to OPM that applicants are just sent to a black hole to await the time when the Board finally feels it has enough applicants to make a decision (not sure when that will be).

    So don’t hold your breath that they are hiring so many people that the backlog is going away. I filed an appeal brief in September and can’t even get an Examiner’s Answer- by the time that case ends up in the queue, well, it will be many years before I ever hear what happens.

    I came all the way from Asia for a 20-minute interview at my own expense and then am put on permanent hold. I can’t say that it’s been an experience that inspires confidence in the system.

    I have had friends with similar levels of experience to my own but they did not even get an interview as not being qualified. These are some very fine people who would make even better APJs that I would so I have no idea why their applications were tossed.

    The new vacancy announcement (open until MAY) is totally different and does not have the usual statement that previous applicants need not apply. There are even two NEW announcements for DETROIT. Not sure how that will work out but I applied for those as well.

    If you look at the people applying for the Examiner jobs, they are getting the same run-around (as can be seen on the Just a Patent Examiner blog). It’s very sad because the better-qualified applicants will eventually just become completely disillusioned with the process and give up.

    If anyone has any insight into what on earth is going on, I would love to hear it. I only got an answer as to the status of my application after numerous phone calls and finally complaints to OPM since candidates are supposed to be told of their application status. But now the whole process seems to have started over with a completely different set of questions and they are NOW asking for 10-15 years of experience.

    My head is spinning.

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  51. As someone who’s only a little over three years out of law school, I say — but it looks like APJs make about what I make (and I’m not at the top of the market). Does someone with 8-10 years experience really want to take that pay cut and become an APJ?

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  52. Yet the practice continues.

    If Michel is seeing them too often, it means they’re getting issued too often. And why wouldn’t an attorney try for them, when they’re sometimes allowable and often the infringed-iest claims in the whole patent?

    Still, I don’t think it’s that frequent that claims are truly ambiguous, when read in context with a mind willing to understand. A lot of what Michel sees is generated by the nature of high-stakes adversarial proceedings where (1) the result depends on the meaning of technical words, and (2) ambiguity is a complete defense.

    Having examiners put definitions on the record during prosecution is ridiculous. Let the examiner identify the ambiguity if it exists, or else take his broadest reasonable interpretation and try to find art.

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  53. Ambiguous claim terms cause enormous havoc in patent cases because they have to be construed. Still the practice illustrates something fundamental in the patent law and it is this:

    The patent attorney is trying to capture the essence of the invention without being limited to the details of the embodiments. This requires “functional” claiming to a degree. Even though one is entitled to claim “cover” what he discloses and enables from his disclosure, a countervailing policy requires that the claims be definite so as to clearly both include and exclude. Vague terms, having no clear description in the specification, inherently fail this notice function.

    As a result, the Supreme Court in several cases, held that claims using functional terms at the point of novelty were indefinite. The policy they said was that such claims were damaging to the public because of the lack of clear demarcation regardless of the fact that they could be construed to be limited to the disclosed embodiments and equivalents in court.

    I think the Supreme Court is right and has always been right on this issue. Those cases are not overruled. The patent office should rely on them, but they are faced with the Federal Circuit that believes that if a claim can be construed, is not indefinite. But this rule flies in the face of declared Supreme Court policy.

    So what Judge Michel is arguing for, a definition, is required in my opinion under the Supreme Court policy. The patent office is entitled to require a definition or give one themselves that people reading a patent in its prosecution history can rely upon the definition to know exactly what is claimed by patent.

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  54. 6, if anybody has a very good solution, other than simply rejecting under section 112 paragraph 2, let’s hear it. The problem identified by Michel, ambiguous claim terms, is as old as claims themselves. I can quote chapter and verse from Walker on Patents where he excoriates patent attorneys for using broad and indefinite terms in claims.

    Yet the practice continues.

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  55. AAA JJ, I think the problem they, the Federal Circuit, complain about the most is where a claim term is not used at all in the specification.

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  56. hmmm…

    chum

    yes, but not in the way it is being used above.

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  57. about poor quality

    Quality does not equal “reject.”

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  58. we’d have noticed by now.

    Hello McFly.

    We’ve noticed.

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  59. “Oh, so having a definition of a few key ambiguous terms in certain ambiguous claims would not reduce the backlog (and as a side effect reduce litigation)?”
    The comment on litigation is PURE speculation, at best. Trust me, litigators will ALWAYS find terms they find ambiguous.

    Also, explain to me how defining “a few key ambiguous terms” would reduce the backlog? Try to be as detailed as possible. I know, that is going to be very difficult for you dumass, but try … still, I won’t hold my breath.

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  60. But if one does the leg work, and the other two wanna shrug their shoulders and say, “Eh, whatever you wanna do is fine by me” then I guess that’s technically 3.

    Isn’t that what happens today?

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  61. There is absolutely nothing wrong with breadth, in and of itself.

    Breadth that is not supported, breadth that reads on prior art – those are separate issues. And we all know whose job it is to indentify that, amirite?

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  62. So he addresses the issue

    No. Most definitely not. What he did was not address the issue. Not in the least. The real issues remains unaddressed and festeres to this day.

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  63. The graph above suggests (as Leopold implied) that a lot of this untracked preparatory work gets spread about evenly over a six-month period

    The graph itself says nothing of the sort.

    Such pure conjecture may be true, then again it may not. But let’s not confuse what can be culled from the graph with wishful excuses.

    Reply
  64. What did you have in mind by your post?

    That you inform yourself before you comment?

    Were you not the one that also had no clue as to the status of the Tafas case?

    Reply
  65. Funny site there. They must have forgotten that the physical addresses of practitioners of record are readily available. AAA JJ informs us above that there’s nothing for examiners to do during the first biweek of October. So a foliage road trip could potentially include a side trip for an off-campus interview. That’s just the kind of efficiency we’re looking for out of the PTO.

    Does anyone know of a corresponding site where lousy attorneys are routinely called out by name?

    Reply
  66. “Case law is pretty clear that there is no requirement for applicants to define every term. ”

    And nobody said there was… however, the CJ does recommend that we start demanding definitions of certain problematic terms. He didn’t say every single one.

    “Judge Michel is lookig for something that would make a CAFC judge’s life easier — not something that will reduce the backlog.”

    Oh, so having a definition of a few key ambiguous terms in certain ambiguous claims would not reduce the backlog (and as a side effect reduce litigation)? :/ You’re kind of dum aren’t you?

    Reply
  67. I know, right? Michel even had the nerve to suggest during today’s presentation that some claims over-reach. Apparently he missed the memo: all claims are patentable. Nothing is too broad.

    Reply
  68. “He wants definitions, and demands for such on the record.”

    Case law is pretty clear that there is no requirement for applicants to define every term. Otehrwise, specifications would be 200 page tomes. The claims are written for those skilled in the art — not CAFC judges that are too lazy to have their clerk’s research the meaning of a term.

    Regardless, the burden is on the Examiner to set forth claim constructions — if deemed needed. If both the Examiner and applicant implicitly agree on the meaning of a term, why waste time putting it in writing when there is a HUGE backlog of applications to deal with.

    Judge Michel is lookig for something that would make a CAFC judge’s life easier — not something that will reduce the backlog.

    Reply
  69. Ah yes, the Dudas bashers are out in droves lately. Wasn’t the Dudas crackdown a result of you people whining about poor quality of allowed claims? So he addresses the issue, and now you whine about that. Make up your minds…

    Reply
  70. Let’s run some back-of-the-pay-envelope numbers here.

    Dennis says that the PTO is hiring 200 APJs over 2 years and that will double the number they now have, which, by my calculation must mean there are now 200 active APJs. (I got that by multiplying 200 by 2 to get the the final number and then taking half of that to get what they have now. With me so far?)

    Look at the graph. Take a high point, say March. 800 ex parte decisions. 200 AJPs. Divide.

    What?? Are these b’crats only putting out 4 ex parte decisions per capita per month???

    No. It’s not quite that bad.

    Dennis’ data are not per capita. Those 800 decisions are really 2400 individual “decisions” bundled in 800 packages of 3 AJP decisions each.

    So, if we assume each APJ contributes the same amount of time to each decision – which is bonkers crazy but giving them the benefit of the doubt – then the per capita output is 12 ex parte decisions per capita per month. Tops. The average is probably closer to 8. A bit over 2 decisions per 40 hours = 20 hours per APJ per decision.

    In reality, only one APJ writes the decision, so the simplifying assumption that all three contribute equally is, well, as I say, bonkers crazy.

    In my wildest guess I would not have said it could take more than a day, much less half a week, to dispose of one appeal. I have never seen a decision that went much, if at all, beyond the briefs, which can be read in 45 minutes. Both of them.

    Are the data screw’d, or are my calculations, or is this the laziest group of lawyers on the planet. What other responsibilities to these people have?

    (Are they hiring yet??)

    Reply
  71. OK, I will. What section?

    It might be better for anyone reading this thread to be less oblique.

    What did you have in mind by your post?

    Reply
  72. The more things change, the more they stay the same.

    Now we have the problem advocating solutions.

    Go instead gently into that good night, Paul.

    Reply
  73. It’s funny, the CJ ret. actually said that there was an enormous workload already at the CAFC that threatens to overwhelm it. He spoke about the measures they’ve used to stop from being overwhelmed, which included rule 36 affirmances and drafting shorter opinions focusing narrowly on a few issues.

    Reply
  74. “Please explain to me how you’re making 112, 2nd indefinite rejections without focusing on at least one term of the claim.”

    Generally I do it by considering the claim as a whole, then being a chum and helping them recognize some of the words that might be causing the issue and then providing them with a helpful suggestion about some words they might change to assist in bringing the whole thing in line.

    If you need further instruction in patent lawl 101 do be sure to book me for a 1 on 1 tutoring session, it is only 100$ an hour, min 1 hour.

    “Getting examiners to write more 112, 2nd rejections during prosecution isn’t going to reduce the number of accused infringers pleading that the asserted claims are “indefinite.” ”

    112′s is not what Michel is after. He wants definitions, and demands for such on the record, NOT 112′s. What part of this are you not getting? Perhaps you’re wondering how he proposes the office would make such a demand, under what rule or statute. I’m supposing he wants a whole new paradigm, set of rules/laws or procedures or what have you, to support this I’m guessing. Or perhaps he wants the executive to use its inherent authoritie to make such a demand and then … oh heck idk what he wants to back it up, let him explain it.

    ” If the dear old judge himself doesn’t understand a claim term, it’s probably because he hasn’t bothered to do the thinking required to figure it out. ”

    Or because it is ambiguous at its core. Either one.

    Reply
  75. “it does seem to me like it would be to everyone’s advantage to have all people that want to work in the patent field have to examine at least a few to get a feel for what examiners do and put up with.”

    Many of us have. That’s why we’re your most vocal critics.

    “it may also be a good idea to have everyone that passes the patent bar and wants to be a primary prosecute a few so as to get a feel for what prosecutors do and put up with.”

    A few? LOL They wouldn’t make it through one.

    Reply
  76. “You have to evaluate claims as a whole bro. If you feel one simple term is indefinite then ur doin’ it wrong.”

    I have yet to receive a 112, 2nd rejection that didn’t focus on at least one claim term for allegedly making the claim indefinite. Please explain to me how you’re making 112, 2nd indefinite rejections without focusing on at least one term of the claim.

    “He’s sitting on the court seeing claim terms that blatantly should never have left the office without being nailed down a bit further. He wants to prevent that”

    Getting examiners to write more 112, 2nd rejections during prosecution isn’t going to reduce the number of accused infringers pleading that the asserted claims are “indefinite.” If the dear old judge himself doesn’t understand a claim term, it’s probably because he hasn’t bothered to do the thinking required to figure it out. There’s no requirement that claim terms match the spec verbatim. Get over it.

    Reply
  77. “If the examiner feels that a particular claim term is indefinite,”

    You have to evaluate claims as a whole bro. If you feel one simple term is indefinite then ur doin’ it wrong.

    “This notion of the examiner assigning a “binding” definition is rather silly. ”

    Meh, you have to look at it from the judge’s point of view. He’s sitting on the court seeing claim terms that blatantly should never have left the office without being nailed down a bit further. He wants to prevent that, and in that respect, it isn’t silly at all, it is saving millions of dollars potentially in litigation expenses. Saving millions of dollars is hardly “silly”.

    Remember, the chief judge suggests that the applicant be given a chance to define the term. Bottom line, he sees this nonsensical system we (well, the courts) have crafted to be able to construe claims for what it is, completely tarded, and feels as if we should go in a different, simpler direction.

    I know all this probably doesn’t make sense to your tard-soaked brain, but if you take a step back away from your indoctrination and look at what he is trying to do, put together a patent system that makes common sense (and “gasp” maybe could be understood by the common man a bit more) then it will make more sense to you. If you are even capable of doing that, which I kind of doubt.

    Reply
  78. If the examiner feels that a particular claim term is indefinite, the examiner should provide an interpretation and the prior art rejection that would be applicable to that interpretation. If the applicant disagrees with the examiner’s determination that the term is indefinite, the applicant can respond accordingly. And to the prior art rejection too.

    The “meaning” (or “definition”) of any particular claim term is the meaning provided by the applicant, if explicitly defined, or the meaning one of ordinary skill in the art would understand it to have in the absence of an explicit definition. If there is no explicit definition, and a paucity of evidence that it has an ordinary and customary meaning, the examiner should establish that with some substantial evidence and then give applicant an opportunity to amend. This notion of the examiner assigning a “binding” definition is rather silly.

    Reply
  79. Not really, it says to give it a 112 when one of the interpretations is going to get rejected over prior art. He wants a definition on the record. Period. Giving out a 112 does not necessarily put a binding definition on the record. And he wants it for 101′s, 112′s, 102′s and 103′s. Indeed, he wants it on a “per limitation” or “per term” basis.

    Reply
  80. “It seemed like he was advocating for a quick knockout if an application has 101 and 112 issues. ”

    Or a 103… which is what he explicitly suggested. It seemed to me like he was advocating for the quick 101/112 but was also advocating for the avoidance of Bilski 101′s because of how hard they are. Which, to be clear, I can understand because they are hard. Really hard sometimes. And like 100x harder if you’re a typical tard that hasn’t read BFDB like 10 times through.

    “His strategy seems to be at odds with compact prosecution? And then there was his statement about utility…”

    I know right? On some of these topics it is almost as if he’s a brand new examiner fresh off the boat after 20 years working in the federal judiciary that oversees examiners. No disrespect intended. Indeed, his noting how little each of the people in each of the roles typically knows about the rest of the roles is perhaps indicative of why he feels the way he does on some of these issues.

    Although, to me, it makes sense in some few cases to focus on he “core issues” because there are a lot of rejections that I can give that are 100% assured to never be overcome on the merits save through amendment and that would save me a good deal of time not having to even attempt a 103 when there are blatant 112 issues out the ying yang making the claim nearly unconstructable. I can cite them the art and they can look over it for themselves while they’re making their amendment to get over the 112. People in my art don’t typically need me to hold their hand, and when they do, meh, let em take a rejection to the face for their incompetence and/or failure to schedule an interview.

    I’ll tell you what though, it does seem to me like it would be to everyone’s advantage to have all people that want to work in the patent field have to examine at least a few to get a feel for what examiners do and put up with. Indeed, it may also be a good idea to have everyone that passes the patent bar and wants to be a primary prosecute a few so as to get a feel for what prosecutors do and put up with. In a perfect world at least.

    Oh and yes, I left out his statement about utility because I didn’t think it very important. He also noted that in his time on the bench he saw a decent number of patents that he thought should have been killed for a lack of utility but nobody had brought it up and it wasn’t on appeal. However he ended up qualifying that as saying that the utility req probably shouldn’t get expanded too much, just some in his view.

    Reply
  81. “he also advocates for some form of the examiner demanding a definition of an ‘ambiguous’ term, and if none is provided then the examiner provides it and that is what is used in the case”

    MPEP 2143.03 already instructs examiners to do this. Well, without the “demanding” part.

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  82. “Is this because people generally believe that the BPAI does a better job, or that they work harder, than the examining corps?”

    The BPAI is a bit better than the examining corp. However, that isn’t a very high bar to overcome. The BPAI suffers from many of the same problems as the rest of the examiners because many of them were former examiners and have inherited the same ills that infect many of the current examiners.

    You get a fairer shake at the BPAI, but the BPAI sometimes epitomizes the phrase “a little knowledge is dangerous.” I’ve seen the BPAI butcher the law in ways that an examiner could only dream about.

    All of them could use a (refresher or even first) course on administrative law and who has the burden of proof.

    Reply
  83. Dennis, can you post a transcript of Michel’s speech please.

    Reply
  84. It seemed like he was advocating for a quick knockout if an application has 101 and 112 issues. His strategy seems to be at odds with compact prosecution? And then there was his statement about utility….

    Reply
  85. Writing out an opinion forces them to more thoroughly consider their decision.

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  86. “Currently, there are people that started at the BPAI just 3 years out of law school (and no additional patent experience). That is just too little time to understand the law and its nuances.”

    I agree. Minimum of 8-10 years should be required.

    Reply
  87. “This practice can make consequences to the Examining Corps much more real if they know a poor rejection is likely to become an uneasy ‘teaching moment’ discussion with their SPE in the near future, perhaps even this FY.”

    Thanks for the laugh, Reince. The more typical reaction from examiners, and SPE’s, when a reversal lands on their desk is, “Whatever. Those APJ’s don’t know anything anyway.”

    No teaching moment there.

    Reply
  88. AAA JJ, I agree with you, but I think there’s something to be said for some cherry-picking of quick reversals from the pile. This practice can make consequences to the Examining Corps much more real if they know a poor rejection is likely to become an uneasy “teaching moment” discussion with their SPE in the near future, perhaps even this FY. I think sometimes Examiners bank on the delay at the BPAI giving them time to either leave the USPTO or separate themselves from the case before a bad rejection is identified as such by the Board. To the degree that cherry-picking won’t really delay other cases, I say do it.

    Reply
  89. Sure. But when the backlog of appeals at the Fed. Cir. starts to explode,

    I take it that you agree with me, then? If that were actually happening, we’d have noticed by now.

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  90. and you’d be through the entire backlog in a month

    If you don’t have time to do it right the first time, when will you find the time to do it right when it comes back around?

    The idea expressed here of a big rubber stamp mirrors the reject-reject-reject rubber stamp that caused this mess in the first place.

    Most definitely not a time saver. Actually.

    Reply
  91. In a rather interesting turn Chief Judge Michel was up in your patent office today trying to convince the undersec of commerce to start “focusing on the imporatant core issues of the case” and not paying so much attention to the “peripheral issues”. He believes drafting shorter OA’s that are more to the point may be a way forward to increasing production (which indeed it is, although those of us that practice it are often considered to be going against policy in some bizarro interpretation of the “policy” in place now). Also, he suggested perhaps more “rule 36″ style decisions at the BPAI.

    He also noted that he does not think the USSC has “predictability” in mind when it issues patent cases and that he thinks predictability is very important. He also didn’t seem to like the Bilski case, and when he indicated such I did lol.

    Likewise he advocates for claim constructions that preserve validity when one of the constructions leads to a clearly invalid claim and the other doesn’t (I disagree with this approach of course, preferring the Miyazaki approach which only results in temporary rejection usually), advocates for 112 1st paragraphs where they are “plainly overreaching and claiming way more than what was invented” (I believe Linn was maligned for using this in a CAFC case not long ago where Rader stood up to him), and he also advocates for some form of the examiner demanding a definition of an “ambiguous” term, and if none is provided then the examiner provides it and that is what is used in the case (in context he meant it was used until the patent expired, not merely issued).

    All very heretical, and half of it requiring courts to play along, but he is rumored to be going to talk to the undersec after the speech he just gave to the undersec to convince him of his policies and their wisdom and how he should totally adopt them.

    The chief judge ret. also noted that each branch of the system, the examiners the practicioners and the courts were all blithely unaware of the system from the other person’s point of view in his eyes and he encourages, and wants to encourage further, us all getting a broader perspective.

    He also was quite clear that he expects the patent bar to try their drafting tomtrickery with ambiguous terms as they consider it “part of their art” (after which he loled akin to how I do) but he believes that we do not have to put up with it and can put our foot right down on it.

    This was all at the open ‘lighting the taper” speech he gave today for the JPTOS.

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  92. Albert Speer’s handbook on management

    Jack Welch? A strategic Neutron strike might be just what the doctor ordered.

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  93. Oh, I am NOT defending the BPAI judges, so much as just stating the obvious.

    It is a matter of human nature & not the job position. My guess is that the vast majority of people do the same thing as much as possible. Cramming for a test, putting off projects until the last minute, paying bills the last day possible, etc. You all probably do the same where you can -filing responses on the due date, for example. Just the way most people operate.

    MVS

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  94. “What the graph below does not reveal at all well is the absolutely precipitous drop that occurs every year at the end of September”

    EVERYBODY at the PTO spends the first bi-week in October (the beginning of the FY) goofing off.

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  95. I doubt it is coincidence that the number of appeals also shot up during the Dudas era.

    Take the infamous Dudas Quality Cliff picture (percent allowances – the one that drops from a historical tight average of 70% to a precipitous low of 40%, without any change in applicant behavior).

    Invert the picture.

    Look at any pictures of rising backlog (take your pick: appeals, RCE’s unexamined apps, examined apps).

    Adjust per appropriate timing factor.

    How close do you think you come?

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  96. “And who’s going to complain if the applicant wins based on one judge’s opinion if the other judges sign the opinion based on that one judge’s recommendation?”

    Certainly not me.

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  97. Right.  And who's going to complain if the applicant wins based on one judge's opinion if the other judges sign the opinion based on that one judge's recommendation?  The examining corps has no due process or statutory rights. 

    Reply
  98. Section 6(b) requires each appeal be heard by at least 3 APJ’s. But if one does the leg work, and the other two wanna shrug their shoulders and say, “Eh, whatever you wanna do is fine by me” then I guess that’s technically 3.

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  99. Sure. But when the backlog of appeals at the Fed. Cir. starts to explode, I have a feeling somebody from CJ Rader’s office will be putting in a call to Mr. Kappos.

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  100. Now there is an idea. If a single judge, reading only the briefs, is inclined to reverse, do so without opinion.

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  101. Too many of the career PTO APJ’s have an affirm at all costs approach. That is a huge time waster.

    That sounds like it would be a huge time saver, actually. Assign all appeals to those APJs, and you’d be through the entire backlog in a month.

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  102. Too many of the career PTO APJ’s have an affirm at all costs approach. That is a huge time waster.

    The time spent figuring out how to dress up a new grounds of rejection as an affirmance is also a huge time waster.

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  103. 6, my gut instinct says you a right here. Human nature, and all that.

    Regarding measures to get people working as hard as possible until they drop, I am sure we can consult Albert Speer’s handbook on management.

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  104. You could even allow for single APJ reversals of rejections while requiring a 3 judge panel for affirmances.

    How would you implement that? Assign a single APJ when the applicant has requested a reversal, and a three-judge panel otherwise?

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  105. “In my mind, the chart showing high-effort-as-deadline-approaches suggests a commitment to personal achievement but also a lack of commitment to the broader timeliness goal of ex parte patent appeal administration.”

    This is a huge problem. I have appeals pending, some for 2+ years, and then I see decisions on appeals that have been pending significantly less time than my appeals. There needs to be some better control over the docket management at BPAI. It’s bad enough that examiners are cherry picking their docket, let’s not have that going on at BPAI.

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  106. the Board could save a lot of time and dispose of more cases by using brief per curium opinions

    Interesting that we’re so focused on the opinion itself. I’m sure most of the actual time spent by APJs is not spent writing the opinion. They have to read briefs, review the file history, hear arguments, confer with other members of the panel, and think about their decision, all of which takes the same amount of time no matter how long an opinion they ultimately write.

    The graph above suggests (as Leopold implied) that a lot of this untracked preparatory work gets spread about evenly over a six-month period, but the review interval prompts a lot of opinions to get finalized in March and September. In much the same way, you might spend several months doing work for a particular client, but make sure the product of your efforts gets filed and billed right before the client’s fiscal year end. That doesn’t necessarily mean you could have been more productive.

    Reply
  107. per curiam opinions (for both affirmances and reversals) are allowed.

    Reply
  108. It’s interesting to me that a number of other posters, among them 6 and mvs, have made the same “unsustainability of peak production” point that I also made.

    So far in this thread I am sensing a lot of love for the BPAI, relative to the obloquy heaped upon the examining corps.

    Is this because people generally believe that the BPAI does a better job, or that they work harder, than the examining corps?

    The difference in love and h@te for the BPAI and examining corps respectively would indicate to me that much of the perceived problem with the examining corps stems not from the poor patent jurisprudence (to which the BPAI is also subjected), but from the examining corps’ incompetence and/or sloth.

    Just a thought.

    Reply
  109. Any decision that is a total reversal should be no longer than one page. That would at least be a start.

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  110. You could even allow for single APJ reversals of rejections while requiring a 3 judge panel for affirmances. That should double the throughput just by the numbers. Allowing per curium opinions would increase that further.

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  111. The cyclical nature pointed out by Dennis is not so much of a Board or examiner issue, but one of human nature.

    You see this type of result in many field where a person is judged at some time interval. Ever hear of a “contract year” in sports. Have a great season when you are going for a new/free agent contract & have a below average the following season. Much the same thing here.

    People can work at a high production rate short-term but it is often not sustainable long-term.

    Dennis, are you basically suggesting that board judges should have their production goal raised to, or close to, their peak output levels? I don’t know what they are, but I would bet if they are raised much the quality (already maligned by you all) would drop. For all things there are consequences.

    MVS

    Reply
  112. Unfortunately, the BPAI is reaping what was sown under Dudas.

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  113. In the first 3 months of FY 2012, BPAI has disposed of 353 appeals in TC 3600 and 372 in TC 3700. In TC 3600, 116 reversals (about 33%) and 116 affirmed-in-part (about 24%). So one third of the appeals in TC 3600 have ZERO sustainable examiner rejections and another quarter have at least one rejection that is not sustainable.

    In TC 3700, 182 reversals (about 49%). 67 affirmed-in-part (about 18%). So ONE HALF of the appeals in TC 3700 have ZERO sustainable rejections and about a fifth have at least one rejection that is not sustainable.

    57% of the appeals in TC 3600 result in some reversal for applicants, and 67% of appeals in TC 3700 result in some reversal.

    Let’s figure that a goodly percentage (say 25%) of the “affirmances” in those cases are really new grounds of rejection masquerading as affirmances, and maybe then you’ll understand why applicants are appealing those rejections.

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  114. Re comment that: “the reason why there are so many more appeals being filed is that there is a growing disconnect between what Examiners believe is patentable and what patent practitioners believe is patentable.”

    I question how much of that is really due to the prosecuting practioner, versus how much is due to clients, especially foriegn companies, that have standing orders to appeal every application unless instructed otherwise, and frequently fail to do so even when they have a clear loser?

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  115. I think Hal Wegner makes a good point, that the Board could save a lot of time and dispose of more cases by using brief per curium opinions like the CAFC does for many appeals. [Especially for reversals of clearly erronious examiner rejections, since those are not even among the small number that might go on to the CAFC.]

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  116. “Higher fees, in a very real sense, defeat justice”

    Our justice system specifically defeats justice so qq moar.

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  117. Dennis – can you sample decisions over the year for numbers of words each to see if it rises and falls inversely with the number of decisions? If it does, then one wonders whether quality also moves inversely with output. Any relationship between percentage of complete reversals and output? I’d argue such reversals are easiest to write.

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  118. “but specifically what measures are you suggesting implementing that will accomplish this goal?”

    See 11/214,280. More decisions like that.

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  119. Higher fees, in a very real sense, defeat justice.

    If the driver is cost, “truth” suffers, and only that “truth” which is convenient (or affordable) survives.

    Anything to do with justice should be divorced from cost drivers as much as possible.

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  120. “It seems to me that the current cadre of Administrative Patent Judges have proven that they have the capability of increasing their throughput by 60% or more in any given month.”

    D, I’m afraid you don’t understand how cyclic patterns like this emerge. For example, at the beginning of their “fiscal year” they will spend a lot of time on cases but will not stay late to finish one, thus having “a life” outside the office. Nearing the finish, they will put in extra effort every day or most days to finish whatever it is they’re working on. Doing this will burn most people out if kept up for long. Them having “the ability” to increase their throughput is not the same as having “the ability to sustainably” increase their throughput.

    “but also a lack of commitment to the broader timeliness goal of ex parte patent appeal administration. ”

    Not really. But you can keep on believing it.

    “With the increase in judges, I expect for the backlog to begin declining by the end of this fiscal year. Further, once implemented, the proposed increased appeal fees will also tend to reduce appeals filed.”

    So in other words what you’re talking about isn’t really needed, just higher fees are? Gotcha.

    Besides all this D, I’m sure you’re quite right that you certainly could get them to increase their throughput in any given time period, but specifically what measures are you suggesting implementing that will accomplish this goal?

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  121. WRT AAA JJ’s comment below, the jurisprudence also needs to be fixed to fix the examining corps, to fix the BPAI.

    Ref: backlog from TC 3600

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  122. Even though I’m the first one to roast public-sector hacks for absolutely dogging it when nobody is looking, and only actually working when it is in their immediate self-interest, the data presented here do not by themselves indicate that the APJ’s are slacking during their periods of relatively lower productivity.

    It could just as easily be the case that they are working well, at a sustainable rate, throughout the year, and then temporarily kicking it into an unsustainable high gear when the reviews come around.

    However unlikely, that is a possibility.

    What the graph below does not reveal at all well is the absolutely precipitous drop that occurs every year at the end of September…perhaps Dennis you could make one linear graph for the entire time period covered, or alternatively move the start-and end-points to December so that the two precipitous yearly drops were more clearly visible.

    Again, the “problem” with the BPAI is the NEED to appeal–that is, the problem is not necessarily within the BPAI itself, but in the PTO actions necessitating appeal. Now we’re back to the examining corps.

    It ALL starts at the examining corps. Fix that, and you will “fix” the BPAI.

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  123. Signs of a real instilled-culture problem.

    All the more reason to keep firmly in mind that the BPAI is not an independent judicial body (and there are substantial administrative law complications arising from this fact).

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  124. Economists have shown that people almost always act in their own short-term, perceived self-interest

    I’m pretty sure that’s what you meant to say, Dennis.

    Do you have a cite for the alternative (unedited) assertion? I laughed out loud, especially at the “economists” part.

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  125. “With the increase in judges, I expect for the backlog to begin declining by the end of this fiscal year.”

    In the first 3 months of FY 2012, there were 1073 appeals docketed in TC’s 3600 and 3700. The BPAI disposed of 545 appeals in those 3 months. So the number of cases being docketed is twice the output. They need to double the output in those two TC’s just to prevent the backlog from growing. BTW, TC’s 3600 and 3700 account for 34.5% of the backlog. So don’t look for the backlog to start going down by the end of this FY. Let’s hope they can simply catch up.

    “Currently, there are people that started at the BPAI just 3 years out of law school (and no additional patent experience). That is just too little time to understand the law and its nuances.”

    One APJ hired in April 2011 had zero patent examination or practice experience. Graduated from law school in 2008, started working as a law clerk at BPAI in March 2009 and promoted to APJ in April 2011. Another APJ hired last April had issued a grand total of one patent as a junior examiner. One.

    “Anybody hired as an APJ should have at least 8-10 years of patent experience”

    I know 3 people with at least that much experience who applied and all got e-mails telling them they weren’t qualified.

    As for the cyclic decision making, keep in mind that 50+% of the current APJ’s are career examiners. They are used to “end loading” when the time is right.

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  126. “As the PTO moves to more than double the size of the Board, now is the time to make structural changes to ensure a better future for this important segment of the Office.”

    Anybody hired as an APJ should have at least 8-10 years of patent experience with at least 5 years of that being legal experience (and being a patent examiner or SPE does not count as legal experience). People with that type of experience will be able to produce a significantly higher volume of work product than those without that experience. Additionally, somebody with that kind of experience will have a firm grounding in the law and should not need extensive training.

    Currently, there are people that started at the BPAI just 3 years out of law school (and no additional patent experience). That is just too little time to understand the law and its nuances.

    Reply
  127. The BPAI’s backlog is not necessarily a result of the BPAI.

    We’ve gone over this before, but the reason why there are so many more appeals being filed is that there is a growing disconnect between what Examiners believe is patentable and what patent practitioners believe is patentable.

    Additionally, the USPTO has been providing incentives to appeal. Gobs of patent term adjustment (which can be very valuable) are gained when an Appellant wins on appeal. Also, with the RCEs being given lower priority in examination (and RCEs permanently tolling type-B PTA), there is little incentive to file an RCEs or an appeal.

    Although no longer an issue, had the proposed continuation rules been put into effect (i.e., they would have limited the number of RCEs being filed for any application or related applications), the filing of an appeal would have almost been mandatory. As such, many practitioners became familiar with the appeal process, and as a result, are now more inclined to use it.

    People can debate as to the reasoning behind this disconnect, but as a general matter, there is far more turnover in the Examiner ranks than in the patent practitioner ranks. As such, to the extent that the perception of what is patentable has been changed, that change is far more likely to occur on the Examiner side. This is borne out by the statistics, which show a significant drop in allowances during the Dudas era. I doubt it is coincidence that the number of appeals also shot up during the Dudas era.

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  128. For what it’s worth, there’s a difference between doing more work at the end of an evaluation period and finishing more work before the end of an evaluation period. Back when I was paid on a quarterly bonus plan, my billings were always substantially higher in the last month of each quarter. But my actual output, as measured by billable hours, was relatively constant.

    I don’t know whether something similar could be going on here or not.

    Reply
  129. Not sure I’d want my appeal to be decided in March or September under quota pressure. In the former Soviet Union, end-of-quarter cars were suspect for assembly shortcuts, like screws that were banged in with hammers. Wonder whether the APJs sometimes also feel like they want to hammer in the screws come March 31st.

    Reply
  130. Dennis:

    If you look at the numbers, the last month in each quarter is almost always the highest amount for each quarter.

    Reply

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