BPAI Appeal Statistics

I have pulled-together recent appeal statistics from a sample of patent applications published in early 2003.  These applications, some of which are now patented, were, for the most part, initially filed in 2001 and 2002.  The sample-size is admitedly small, but the results are striking.

Beginning with a sample of just under 10,000 filed patent applications, I found 729 cases where the applicant had filed a notice of appeal.  Out of those 720, only 50% (363) ended-up actually filing an appeal brief. That drop-of is not surprising since many prosecuting attorneys use the notice of appeal procedure as a way to “buy time” while deciding whether to file a continuation, appeal, or RCE. 

Reopening Prosecution: Two salient numbers pop-out from the cases where the applicant Rejected as Defective or Incompletefiled an appeal brief: (1) Of the 363 cases where the applicant filed an appeal brief,  25% (90) were rejected on procedural grounds after the PTO found the appeal brief defective or incomplete. Once the appeal was properly filed, Examiner’s filed written answers in less-than-half of the cases.  Although not-yet-documented, the presumption here is that in the other 50% of cases, the rejection was withdrawn and prosecution was reopened.

The problem, it seems, is all too often, the appeal is the first time when the parties actually take time to really understand the invention and the prior art. (This goes both for the applicant and the examiner). The PTO has recognized the problem of prosecution being reopened in so many cases.  As a result, the Office created the pre-appeal-brief conference

Patent BPAI Pre-Appeal Conference Pre-Appeal Conferences: My sample included 82 requests for pre-appeal brief conferences.  In 7% (6) of cases, the applicant won and the rejection withdrawn.  In a larger portion of cases, 28% (23), applicant won the day, but prosecution was reopened. In 55% (45) of cases, the PTO thought its position was strong-enough to proceed to the BPAI. 5% (4) were defective and the remaining 6% (5) are unknown (presumably still in process).

BPAI Outcomes: General BPAI decision statistics are available here. In my sample of 56 decisions, the outcomes were virtually evenly-split. 46% affirmed; 45% reversed; and 9% affirmed-in-part. 

38 thoughts on “BPAI Appeal Statistics

  1. At this point, MPEP § 1214.04 (“The examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references”). 39 37 C.F.R. § 1.197. 40 35 U.S.C. § 145. 41 35 U.S.C. § 141.

  2. Easy Question: When you file a response to a notice of non-compliant appeal brief, what should your heading/intro line be: Further to the notice of non-compliant appeal brief mailed on (Date), and the notice of appeal submitted on (Date), Appellant hereby submits this appeal brief according to 41,37(d).

    I know it is a trivial question, but the way they are rejecting these things for such technicalities, I just wanted to get an idea of what’s being used.

  3. Caveman – the “pre-appeal” review of which you speak is still mandatory. However, it is actually a “pre-answer” review, as it takes place after the brief is filed. The examiner, his SPE and a designtaed conferee sit down and review the merits of the case and decide on the likelihood of the board affirming the examiner’s rejection. This is distinct from the pre-appeal review which comes prior to the brief being filed. The use of a peer as a reviewer in these situations is no longer the case, although the examiner is certainly allowed to run through his rejection with any number of peers to ask for opinions at any time.

    Part of the problem that I have seen recently is the inconsistency of the BPAI. I have recently seen them affirm an examiner and additonally have him write new rejections on dependent claims he indicated allowable, rejections I wouldn’t expect to see from the greenest examiner coming directly out of training. Also, I have seen them reverse an examiner on mere semantics at what an element was called, when clearly the prior art was exactly the same thing (right down to the drawings being almost identical). Makes it hard to guess as to what they might think about the “borderline” cases. Thus, play it safe and let it go.

  4. ***The rules governing the format of Appeal Brief indicate that a listing of the status of *all* claims is required in the appendix. (see, e.g. 37 CFR 41.37(c)(1)(iii))***

    There is a difference between a listing of the claims in the appendix and the listing of the status of the claims. The status of *all* the claims were listed in my appeal brief. However, I did not include the allowed claims in the appendix.

    ***Caveman, I don’t think the PTO would find it an error if you listed all the pending claims rather than just the appealed ones.***
    Nope …. had that happen once as well, got a Notice of Non-Compliant Amendment because allowed claims were included in the appendix.

  5. Caveman, I don’t think the PTO would find it an error if you listed all the pending claims rather than just the appealed ones.

    These formalities are so darn complicated now!

  6. Step back,

    Although I agree that it helps to know a little about the particular examiner you’re up against, and that a phone call is useful, you might also try your best shot at the objective truth of the matter as best you can figure it. I would hate to craft a response just to appeal to a particular examiner. Don’t forget the potentially huge number of eyes who may eventually have access to your written arguements.

  7. johng,

    You got me there…

    41.37(c)(1)(viii) loosely states claims “involved in the appeal.” looks like there’s some abiguity between (iii) and (viii). Maybe PDS could have gotten away with only claims on appeal in the appendix (viii) if he separately noted status of *all* claims in compliance with (iii) somewhere else in the brief, which he may have failed to do.

  8. On a related note, how many here bother to do something unobvious and novel, namely, telephoning the examiner and discussing the case?

    My personal experience has been mixed. Some examiners are incredibly helpful and all too happy to talk. Some refuse to talk at all. It’s a full spectrum in between.

    Given that a phone call and can be cheap and quick and allow you to get a better picture of the examiner’s mindset, it generally doesn’t hurt to try (except that you have to write a darn, 1 sentence interview summary: claims discussed, no agreement reached.)

    I never go in with the idea that I am going to win the case at that moment with some brilliant argument. Instead, I try to better understand where the examiner is coming from. What is her or his technical background? What is their definition of the claim term? That kind of thing.

  9. to PDS,

    The rules governing the format of Appeal Brief indicate that a listing of the status of *all* claims is required in the appendix. (see, e.g. 37 CFR 41.37(c)(1)(iii))

  10. Unfortunately, the statistics seem to indicate that roughly 75%-80% of the time the Examiner does not really start looking at the case with any zeal until a Notice of Appeal and brief is filed. I always feel a sense of outrage on behalf of my clients when this happens.

    I seem to recall that a pre-appeal review between the Examiner, and two other persons such as the Examiner’s SPE and a third Examiner, was a matter of course and did not require a special request. Such a mandatory peer-based pre-appeal review would hopefully shake out the sloppy rejections and disincentivize the Examiner from not picking up the case and really reading it (including the prosecution record) unitl after a Notice of Appeal is filed.

    A question to the readership: is anyone aware of an effective way to hold the PTO to account under principles/doctrines of equity such as laches in connection with PTO delay?

  11. Just a comment to the attorney who believes that procedures matter. He should not include dismissed cases with remanded cases. Many dismissed cases are not dismissed due to examiner errors, but are dismissed because an RCE is filed or the case is abandoned expressly at the BPAI. In either situation, those cases probably represent situations where the attorney was persuaded by the examiner’s answer, since otherwise why not just let the BPAI decide.

  12. Mike:

    I cannot speak for all applicants, but I do know that the initial burden rests with the examiner to establish that the claims are not patentable, and once the initial burden has been met, then the applicant has the burden to distinguish their claims abover the applied prior art.

    The problem I see, which both I and ATPBM alluded to above is that in many instances, I have no idea as to what, exactly, is the basis for rejecting the claims. Sometimes I don’t find out until I get the examiner’s answer to my appeal brief.

    However, even for those actions in which I have absolutely no idea what the examiner is relying upon to reject the claims (because the examiner is citing 2 columns of text for a 7 word limitation), I’ll still make a guesstimate and identify at least one point of novelty (or nonobviousness).

    I’ve reviewed plenty of other work by attorneys, and I’ll admit, I’ve seen a lot of dung. However, my experience is that a well-written, well-searched office action will quickly lead to abandonment, allowance, or a narrowing amendment regardless of the attorney. On the other hand, a poorly written office action leaves too much wiggle room for an attorney to argue that the examiner has not established a prima facie case of anticipation or obviousness.

  13. Regarding the alleged intransigence of the examiners, probably 75% of the applicants make absolutely no attempt to distinguish their claims above the prior art until after the first or second RCE has been filed.

  14. I agree with PDS. I just got a non-compliant today because instead of claim “3 – 4 (Canceled)” I had “3 4 (canceled)” in the right position where 3 and 4 would be and the office decided I had not identified claims 3 and 4 in the application.

    25% probably represents 5% or less substantively incorrect rejections.

  15. Just some comments on the 25% rejection rate. When I first started filing electronically, I received dozens of Notice of Non-Compliant Appeal Briefs because I electronically signed:

    /s/ PDS

    Instead of
    /PDS/

    I can direct anyone to the filings at the SEC in which thousands, if not hundreds of thousands of documents were electronically signed using a version of: /s/ PDF

    I didn’t bother fighting those. Instead, I just send in another appeal. As a side note, not all my documents signed with /s/ PDS were rejected, just some.

    However, I’ve gotten a Notice of Non-Compliant Appeal Brief in which the Appeal Brief was rejected because claims 2-5, 7-10, and 11-14 were missing in the appendix. However, as I pointed out in my response, claims 2-5, 7-10, and 11-14 were allowed, so I didn’t appeal them.

    I’ve even had one get kicked back where the addition of one word in a header of one of the sections was sufficient to overcome the objection.

    I had one in which I had a first appeal brief got kicked back to the examiner; examiner issues new rejection; I file a second appeal brief with the same summary of claimed subject matter; and I receive a notice of non-compliant amendment based upon the summary.

    In many instances, these problems don’t addressed until the Appeal has sat on the examiner’s desk for 3 months. Typically, I’ll respond to these in a week from issuance and they sit on the examiner’s desk for another 3 months.

  16. It is always good to see a notice of allowance, even after appeal, but I think errors were made on the part of the PTO if an appeal had to be filed before rejections were withdrawn.

    I have heard it many times before, “applicants don’t seem to get serious until after appeal?” Huh? Sure, they get seriously pissed off when they pay thousands of dollars related to appeal only to have the examiner do what he/she should have done at first or second action.

    I call all this wasted money the PTO training tax. It would be understandable in some way if one or more individuals actually were stealing all this dough. At least there would be a reason. Instead, it seems most of it is being flushed down the toilet or used by the PTO to keep their gross incompetence secret.

  17. Appeal briefs were “rejected”? The PTO rejects only claims. Your analysis seems rather biased against the PTO. The format for Appeal Briefs is crystal clear – we have people without college degrees reviewing them. 25% of them are defective? That reflects very poorly on the capabilities of the Patent Bar – 25% can’t follow cookie cutter requirements. Your second salient number was actually a presumption. I think it is a pretty poor presumption at that. Sure, some of the 50% is based on reopening, but a major portion is a notice of allowance, and some is a nominal reopening – maybe one dependent claim was improperly rejected, there was a faulty Offical Notice, etc.

  18. I’d like to add an anecdotal comment on the 25% non-compliant brief statistic. I have a case here where I got a Notice for missing out the evidence and related proceedings appendices (I hadn’t – they were present). I got that notice withdrawn with a quick phone call, but then they sent another notice because these appendices just say ‘none’, which is correct because I’m not relying on evidence and there aren’t any related proceedings. Of course, I expect the second notice to be withdrawn as well, still with no changes to the Appeal Brief as originally filed.

    Suffice to say, the stat that 25% of briefs get a notice saying they are defective or incomplete is no mystery to me atall – I’ve had two of these notices on an Appeal Brief that is complete and not defective!

  19. “unconstitutionally flawed” … I like that description. When the incompetence at the PTO is finally flushed out for all to see, what would happen to such an agency. Does it get taken over by some overseeing group like what happened in the District? Bi___ set me up!

  20. Regarding pre-appeal brief conferences (PABCs): “In a larger portion of cases, 28% (23), applicant won the day, but prosecution was reopened.”

    Why?

    37 C.F.R. 104(a)(1) states “1) On taking up an application for examination or a patent in a reexamination proceeding, the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention. The examination shall be complete with respect both to compliance of the application or patent under reexamination with the applicable statutes and rules and to the patentability of the invention as claimed, as well as with respect to matters of form, unless otherwise indicated.”

    If the Office is following the law, that 28% should be much lower. I have sent cases that have gone through at least 4 substantive Office Actions to the PABC, won the day, and had the application returned for further prosecution with a subsequent rejection over new art. Inexcusable. That percentage should represent cases that can be rejected over a previously unconsidered “new” argument based on the existing record, a much more rare situation. The Office’s current determination to eliminate “whack-a-mole” prosecution requires a similar determination to eliminate “whack-a-mole” examination.

    On a loosely related note, being reversed under the PABC’s clear error standard should count against an examiner’s performance statistics.

    Regarding post PABC practice: “Once the appeal was properly filed, Examiner’s filed written answers in less-than-half of the cases.”

    I know that this would require a heinously detailed analysis, but on a personal note, when is there truly an excuse for this practice? Do practitioners routinely fail to present the cogent argument in a response or in an after-final argument? It should be comparatively rare for a practitioner to present material which which is new or newly persuasive given the examiner’s ability to demand that material be struck from an appeal brief. I view this as a significant indication that examiners are hiding behind appellate hurdles to further “whack-a-mole” examination.

    Since John Doll continues to tour the country and give presentations touching on the proposed changes to RCE and CONT practice, I’m half tempted to raise these statistics publicly to see whether the pervasive failure to satisfy sec. 104 will be, at a minimum, “good and sufficient reason” for permitting such filings.

  21. The reason for the reversal rate at the Board is simple: there is simply no aspect of the examiner’s rating that is affected by being reversed by the Board. Their performance appraisal plan (PAP) does not include any such element.

    The examiner can send an absolutely meritless rejection to the Board, get reversed basically summarily, and the examiner’s rating is not affected. The examiner can lose every appeal and still get an outstanding rating and the attendant bonuses and awards.

    I had an application go to the Board (there was a Brief and an Examiner’s Answer) and the Board remanded the case back to the examiner and told him to re-search the entire application. The Board even suggested the classes/subclasses to be searched, and cited some prior art not of record (which was commonly owned 102(e) art anyway, so pretty much useless, but a nice try nonetheless).

    Three people sat in on the appeal conference and initialed the Examiner’s Answer. They all must have thought, “Yeah, this one’s ripe for appeal.” Complete waste of my client’s time (and money), and the Board’s time. Do you think that examiner, and the other two who agreed the case was ripe for appeal, received any negative feedback? Highly doubtful. I’m guessing the examiner’s review went something like this: Well, let’s see, you did 110%, and didn’t have anything bounced by QR. You’re outstanding!!!!

    Another problem with TC’s 3600 and 3700 (i.e. the “mechanical” TC’s)is the general attitude amongst examiners is: I’m not issuing this. Let the Board issue it. Again, when there’s no consequences for such a terribly unprofessional attitude and work product, what can you expect?

    P.S. In the ordering remanding my case back to the examiner, the Board stated that it was to be treated as special. Six months later I got a new Office Action as terrible as the one I appealed. Real special.

  22. The PABCR is only useful where the bogus rejections in question are -only- novelty rejections. In three out of three of these, I “won” (its still a “win” if prosecution is re-opened).

    But if there is an obviousness rejection… my experience is that the PABCR is a complete waste of time/money.

  23. primary examiner in 3600,

    Great question on how often the BPAI introduces a new ground of rejection.

    If you Google

    site:www.uspto.gov/go/dcom/bpai/decisions “reversed” “new grounds”

    you get 374 decisions. It would be interesting to see if these cases show any trends or common themes.

  24. Dennis,

    Thanks for the great observations.

    One of the statistics we’ve been looking at is the percent of recent patents in a given class/subclass that had to get a decision by the BPAI in order to issue.

    Overall, the rate is only about 1-2%. Not a big deal.

    For business method patents, however, (class 705) the rate jumps to around 10%. In the insurance field (705/004) the rate is an astronomical 30%! Perhaps this is not surprising given the inherent difficulties in examining these applications, but it was still quite an eye opener when we first did the stats.

    More here: link to marketsandpatents.com

  25. Nice piece of statistical work, Dennis.

    It would be interesting to know how often the BPAI makes a rejection of its own. The Board appears to be doing this more often. If so, “reversal” of the examiner takes on a new meaning.

    Primary Examiner, TC 3600

  26. ATBPM:

    At the rate this year is going, I’ll have a statistically significant sample size to work with with regard to dispositions regarding Appeals and PABCRs.

    I was amused by the discussion in your cited decision as to “guessing.” It is a term that I have frequently used, in one form of another, in my responses to the PTO. My experience, similar to yours, is that much of what I receive from the PTO leaves much up to the imagination. However, under 37 CFR 1.104(c)(2), my imangination should not be getting that much of a workout.

  27. I made FOIA requests in early spring 2006 for all the statistics the PTO has regarding all phases of the appeal process, as part of preparing comments on last summer’s rule proposals.

    Dispositions of Appeals – from Appeal Conference to Board Final Decision

    Appeal Conference
    Year Revision Appeal Briefs Examiner Actions Examiner Writes Exr’s Answer Exr Reopens on New Ground (37 CFR § 1.193(b)), usually abandoning existing position Allowance – all rejn’s wrong Other

    1998 3/06 5,609 5,548 3,235 58.3% 698 12.6% 1,540 27.8% 76 1.4%
    1999 3/06 5,500 5,432 2,862 52.7% 825 15.2% 1,673 30.8% 74 1.4%
    2000 3/06 5,934 5,873 2,758 47.0% 1,214 20.7% 1,813 30.9% 89 1.5%
    2001 3/06 6,706 6,633 2,707 40.8% 1,651 24.9% 2,195 33.1% 83 1.3%
    2002 3/06 7,001 6,885 2,709 39.3% 1,855 26.9% 2,264 32.9% 58 0.8%
    2003 3/06 8,289 8,141 3,248 39.9% 2,419 29.7% 2,424 29.8% 52 0.6%
    2004 3/06 9,740 9,126 3,676 40.3% 2,969 32.5% 2,394 26.2% 88 1.0%
    2005 3/06 11,263 9,726 4,120 42.4% 3,370 34.6% 2,147 22.1% 93 1.0%
    2006 3/06 6,055 2,092 994 47.5% 677 32.4% 389 18.6% 32 1.5%

    Board of Patent Appeals
    Year Total Dispos’ns Affirmed Modified / Aff’d in Part, Rev’d in Part Reversed in full Remanded (combining “panel” and “administrative”) Dismissed Withdrawn Total Net Affirmance (Appl Conf and Board)

    1998 4,091 1,464 35.8% 391 9.6% 1,239 30.3% 69 1.7% 70 1.7% 24%
    1999 4,520 1,283 28.4% 504 11.2% 1,573 34.8% 986 21.8% 169 3.7% 5 0.1% 18%
    2000 4,963 1,442 29.1% 518 10.4% 1,930 38.9% 911 18.4% 152 3.1% 10 0.2% 16%
    2001 5,075 1,516 29.9% 459 9.0% 1,868 36.8% 1,089 21.5% 143 2.8% 0 0.0% 14%
    2002 5,062 1,509 29.8% 471 9.3% 1,895 37.4% 1,095 21.6% 92 1.8% 0 0.0% 14%
    2003 3,815 1,398 36.6% 413 10.8% 1,490 39.1% 453 11.9% 61 1.6% 0 0.0% 17%
    2004 3,436 1,276 37.1% 401 11.7% 1,282 37.3% 397 11.6% 80 2.3% 0 0.0% 17%
    2005 2,925 1,113 38.1% 366 12.5% 1,159 39.6% 176 6.0% 111 3.8% 0 0.0% 19%

    The most crucial thing to note here is the catastrophic error rate – the PTO’s best affirmance rate has never reached 20%. When an agency’s substantive results are this flawed, the courts conclude that the agency’s procedures are unconstitutionally flawed. Mattern v. Weinberger, 519 F.2d 150, 161 (3rd Cir. 1975) (when an agency’s own figures show reversal rates of one third, the agency’s procedures “cannot be defended,” and the agency is in violation of its duties to provide due process), gvr’d on other grounds, 425 U.S. 987 (1976). A reversal rate approaching eighty percent is beyond anything that appears in any case – apparently no other agency has ever tolerated that kind of error rate.

    The second important thing that jumps out is the relatively large “remand” category. In a good number of recent published Board decisions, the Board refused to hear an appeal because of omissions by the examiner. E.g., Ex parte Rozzi, 63 USPQ2d 1196, 1200 (BPAI 2002) (Board refuses to adjudicate where examiner’s work is incomplete); Ex parte Schricker, 56 USPQ2d 1723, 1725 (BPAI 2000) (“The examiner has left applicant and the board to guess as to the basis of the rejection … We are not good at guessing; hence, we decline to guess.”); Ex parte Braeken, 54 USPQ2d 1110, 1113 (BPAI 1999) (appeal is “not ripe” because of omissions by examiner). In other words, if the examiner leaves big gaps in his/her papers, the Board cannot provide a remedy – all they can do is bounce the case – to the same nincompoop whose omissions created the problem in the first place. At least in my practice, where well over half of the papers I get from the PTO are dead silent on at least one issue that would result in immediate allowance if it had not been omitted, the PTO’s procedural laxity effectively deprives my client of an opportunity to appeal.

    Footnotes.

    First, these statistics are a year old. Miracles may have occured in the last 12 months without my noticing them.

    Second, in combining the PTO’s raw statistics to arrive at a final number, I made a few simplifying assumptions. For example, I assumed that in the “affirmed in part” category, half of issues were reversed, and half were affirmed. I combined Appeal Conference 2004 statistics with Board final decision 2004 statistics, even though the two populations are between 1 and 2 years out of synch with each other. Thus, my final numbers may be high, or may be low – but the error is not enough to move the PTo anywhere close to the court’s 33% threshold for consitutionally-adequate procedure.

    Third, at the time, the PTO apparently had no statistics for the rate of diposition of pre-appeal brief conference. This would have some effect on the 2005 numbers, in the direction of making the overall reversal rate higher and affirmance rate somewhat lower – but I can’t quantify by how much.

    To answer Steve Morsa: You can do a Google search on all Board decisions, like this:

    [your keywords] site:link to uspto.gov

  28. I agree with pds – they are mostly a waste of time. I advise against them unless the rejections fail to pass the laugh test (e.g., an claim element clearly missing in the references and no interpretation issues involved). I’ve never had one result in an allowance.

    BTW, I would not pay again for a NOA (but authorize the PTO charge if the Office considers a fee is due). For a regular appeal, there is no need to pay again. Why should you pay for the PTO’s errors?

    Notice the large number of cases being returned to the examiners for re-opening after briefs are filed. In the past, more of these would have gone to the Board, and the numbers of reversal would have been much greater.

  29. 82% … The total of Pre-Appeal Brief Conference Requests that either proceed to BPAI or in which prosecution is reopened.

    If instead of filing a PABCR, an Appeal Brief was filed, you wouldn’t have to shorten/omit arguments to fit the 5 page maximum, and if prosecution is reopened, you can still maintain the appeal by filing a Reply Brief per 41.39(b)(2). Otherwise, if you filed the PABCR, the examiner reopened prosecution and you wanted to appeal again based upon another bad rejection, you would have to pay for a second notice of appeal.

    I have found the filing of a PABCR a waste of time (and I have filed many). It is far too easy for an examiner to postpone responding to the arguments until another day by just checking the box of “Proceed to BPAI.”

  30. …and I suppose we shouldn’t really be surprised that the FY 2006 cumulatives reflect TC 3600 as having the highest rate (41%+) of BPAI reversals…

    Obviously, it’s time for PTO management…the media…and the public…to stop pressuring the already overworked examiners to block “the biz-methods” at (almost) any cost.

    Also; would be nice for the PTO to enable keyword search of all (published/publicly available) files, decisions, etc; should improve efficiency. Would be a big help for me.

  31. The PTO is still in the process of transforming into an open and transparent system. Until a few years ago, the office was compelled to be closed and confidential. With the advent of publication of pending applications, that has changed dramatically. I expect that in another five years, the system will be even more transparent.

  32. …but Dennis’ stats herein go much deeper than that…and the fact he had to do all this analysis to get them does not speak well for the depth of data provided by the Office.

  33. me:

    The PTO does publish the Board’s affirmed/reversed/remanded stats on a regular basis in the OG.

  34. Good comments and analysis, but shouldn’t the BPAI release these stats on request? Should we need a freedom of information request to gets basic stats? I think all the prosecution stats should be released so the practioners and the Office have the same view of the world – it might do alot to promote the kind of positive change we need (and not the kind of negative change the Office seems to force on us).

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