Appealing BPAI Rejections: Part I

My keen research assistant Patrick Barnacle pulled up records on 56 ex parte patent appeals that have been decided by the Court of Appeals for the Federal Circuit since March 2005. All of these cases arise from rejections sustained by the USPTO’s internal Board of Patent Appeals and Interferences (BPAI). We are working to create a more complete database. In the meantime, I wanted to report some preliminary results on timing.

The median ex parte appeal took just over fifteen months to complete as measured from the date of the BPAI decision until the date of the Federal Circuit decision. As measured from the filing of the CAFC Notice of Appeal, the median appeal took exactly one year (365 days). Some appeals took longer: Comiskey, Ferguson, and Bilski each took more than two years from the NOA, but they were all tied to en banc decisions. About 25% of the appeals took less than ten months from the NOA.

Once oral arguments (if any) are complete, the Federal Circuit is rather quick at issuing an opinion. The median decision was issued 47 days after the oral arguments. (Again, a skewed average of 86 days is driven by the handful of en banc decisions) 30% of the decisions came within one week of oral arguments – most of those took one to two days.

We have not yet analyzed the correlation between delay and results, but it appears that especially quick decisions tend to favor the PTO over the applicant. As you might expect, delays in judgment correlate with longer opinions; opinions marked precedential; dissenting opinions; and opinions with Judge Newman on the panel.

20 thoughts on “Appealing BPAI Rejections: Part I

  1. “reasonably anticipated claims”

    I read it as in the Heinz Ketchup ads using the song “Antici-pay-ay–shun, it’s keepin’ me way-ay-ay-iting”.

    (Claims I’m reasonably looking forward to obtaining allowance upon).

  2. Aha – he of US20070055560 “fame”.

    OK, I take it back… anticipated, obvious, non-statutory, whatever…

  3. @6 “”In my own circumstance as an inventor I have been waiting for close to 3 years without a first office action, and there are some large companies that would be infringing reasonably anticipated claims.”
    Large companies infringing anticipated claims. Lol!”

    I know that seeing the words “anticipated” and “claims” together immediately suggests a particular meaning to patent professionals (and even examiners), but it seems perfectly clear that what this inventor (presumably not a patent professional) meant was:
    “…large companies that would be infringing claims that could reasonably be anticipated as being allowable”.

  4. “As you might expect, delays in judgment correlate with … opinions with Judge Newman on the panel.”

    Bless her heart, esp. in light of Abbott v. Sandoz.

  5. After the PTO reopened prosecution in the Hayes case, it was returned to the examiner and he issued another round of OAs. According to PAIR, the case is now on appeal to the BPAI again (US 10/190,039).

    I don’t know how often this happens which is why I was hoping Dennis’ stats could shed some light on the practice.

    Although it looks like Dennis’ data set is only Federal Circuit decisions, which wouldn’t include cases where no decision was made because the PTO reopened prosecution.

  6. justapatentprosecutor, the CAFC typically allows oral argument whenever there’s counsel on both sides, unless the parties waive it.

    Dennis writes: “it appears that especially quick decisions tend to favor the PTO over the applicant” This is probably because the PTO is usually (always?) the side writing the red brief. All else being equal, it’s usually much easier to write an opinion affirming than reversing. For one thing, affirmances can take the form of Rule 36 orders, which take no time at all. For another, when a court reverses and/or remands, it’s necessary to explain why the decision below was wrong and what should happen on remand. For an affirmance, the court can use as little or as much detail as it wants in saying “the decision below was right” and doesn’t need to provide instructions for further proceedings.

  7. A new contender for quote of the year:

    Malcolm Mooney

    “It’s about engaging commenters with ideas which, whether correct or incorrect, are articulated coherently and defended with some semblance of honesty and credibility.”

    Posted by: Malcolm Mooney | Jun 01, 2009 at 03:01 PM

  8. For their purported ability to actually mean something, statistics are overrated… There is no substitute for skill and acumen. With those things, you can beat any statistic.

  9. The only two times I ever seen prosecution reopened after a Board decision and before an appeal may be abnormal. They were both because the Solicitors Office did not even want to defend the Board decision, and thus wanted to settle. I.e., favorable. So it may cut both ways?
    But if reopenings are being done only because someone finally did a decent prior art search, maybe it would be a good idea for an applicant to do that itself before spending a lot of money on a Board appeal and a CAFC appeal?
    P.S. I once asked a Board member why they don’t dispose of more appeals with a one hour prior art search for what the examiner missed, instead of a more time-comsuming appeal decision, but they are not allowed to do that, even when it seems clear that better prior art must be available for what is being claimed.

  10. Dennis, just to supplement your analysis a little. The “especially quick” decisions naturally favor the PTO, since they will largely be Rule 36 judgments without opinion, which are always affirmances (you cannot reverse under Rule 36). Since the PTO cannot appeal its own decisions, Rule 36 judgments always favor the PTO.

    In fact, the decisions that come within 1 week of argument probably fall into two categories (depending on how you compiled the data set). Rule 36 affirmances, and cases that were calendared for an argument session but submitted without oral argument. The informal tradition at the Federal Circuit is that, for a case submitted without oral argument, a written opinion will issue the next day.

  11. “Cases like In re Hays (Fed. Cir. 2006) have discouarged applicants from appealing BPAI decisions due to the fear that the PTO might reopen prosuection after the applicant has spent 50k+ on briefing. ”

    Why don’t they simply spend 2k on briefing and call it a day?

  12. Dennis:

    Do you have any statistics on how often the PTO reopens prosecution before any substantive action by the CAFC? Cases like In re Hays (Fed. Cir. 2006) have discouarged applicants from appealing BPAI decisions due to the fear that the PTO might reopen prosuection after the applicant has spent 50k+ on briefing.

  13. A new contender for quote of the year:

    Eugene Quinn

    “In my own circumstance as an inventor I have been waiting for close to 3 years without a first office action, and there are some large companies that would be infringing reasonably anticipated claims.”

    Large companies infringing anticipated claims. Lol!

  14. justapatentprosecutor:
    “I’d also be interested in learning the percentage of appeals to the CAFC that have oral arguments. Not being familiar with CAFC practice at all, I assume that not all cases that come before it are orally argued.”

    You’re correct. I have no idea how representative two month’s calendar is in answering your question, but check this link:
    link to cafc.uscourts.gov

  15. Yes a CAFC appeal from the Board is expensive to be effective, and more importantly the odds against overturning a Board decision by going directly to the CAFC in recent years seem to run roughly nearly 10 to 1, if you exclude appeals from interferences, where the odds are slightly better [maybe 7 to 1]?
    The Supreme Court decision in In re Zurko holding that the Administrative Procedure Act requires the CAFC to apply the more respectful APA “substantial evidence” or “arbitrary and capricious” standard for overturning Board fact-findings probably did not improve those odds.
    Also, highly experienced CAFC practitioners like Don Dunner sometimes advise clients to file continuations to get well written affidavit support for patentability into the record for an appeal [or a possible allowance] rather than to appeal directly from an adverse Board decision to the CAFC with mere attorney argumentation.
    If there was a clear legal error by the Board, or a new CAFC decision on point in the meantime, a timely request for reconsideration on that basis to the Board itself might be the first step.

  16. I’d also be interested in learning the percentage of appeals to the CAFC that have oral arguments. Not being familiar with CAFC practice at all, I assume that not all cases that come before it are orally argued.

  17. I’d also be interested in hearing from practitioners as to why appeal to the CAFC is so rarely taken. I understand there are (large?) attorney costs associated with briefing and oral argument, but…

    Are the CAFC court costs prohibitively high?
    Is the BPAI generally getting it correct such that appeal is useless?
    Is the one-year timeline for CAFC decision too much after waiting 2 years for a BPAI decision?
    Are practitioners not admitted to practice before the CAFC?
    All of the above?

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