BPAI Backlog

In January 2009, I reported on a dramatic rise of BPAI Appeals and the associated backlog. Since then, the backlog has almost doubled to over 10,000 pending appeals. This is the largest backlog on record and tends to explain why the Board is attempting to implement procedures to streamline the process.

At the Board’s average rate of 500 disposals per month, the backlog would take over 20 months to eliminate. However, that result requires the counterfactual assumption that no additional appeals will be filed during that period. Rather, though four months remain in FY2009, the number of ex parte appeals filed this year will likely more than double the record-filing of 6400 ex parte appeals in FY2008. Thus, appeals are being filed at a rate about 2 1/2 times faster than the Board’s usual work flow rate. In May 2009, for instance, the Board disposed of 523 appeals, but received 1641 new appeals to decide.

See, BPAI WEBSITE; PATENTLY-O POST.

123 thoughts on “BPAI Backlog

  1. Amazing how self perception works. I imagine you not as the little fellow, but rather as the clothiers, peddling the invisible clothes to the king, what with all your “fun” and thoughtless posts and all.

  2. I agree with Znutar’s suggestion to flood the BPAI docket. 50% chance on appeal is better than 0% in an RCE.

  3. Watch it, JS, someone will accuse us of being one and the same. If you want to transfer some cases, let me know. I can’t say that the band-busting file history days are completely over – endless non-finals tend to produce a bloat, but I’ll appeal those too after a point.

  4. Look MD, at the 08.20 post by “Argues with MM”. You have a poser. Apparently you are making a difference.

  5. Hello Small Child. I have been posting here now for years, under my MaxDrei moniker. From time to time, I do indeed imagine myself to be the little fellow in the fairytale, muttering that the Emperor isn’t actually carrying much in the way of clothes.

    Maybe it’s all pathetic self-delusion, but I do cherish the thought that some of the stuff I write on Dennis’s screen might be having a useful effect, here and there, from time to time. Actually, it is that which keeps me posting.

  6. MM wrote “and really couldn’t give a crap”

    Hmmmm …. did you run out of crap? Considering your extensive references to crap over the years on this blog, have you run out for good?

    Or are you just refueling so you’ll be ready with more crap-laden posts in the future?

    “I eat sockpuppets for breakfast.”

    Interesting source material for your crappy posts. Are you eating sockpuppets to channel their intelligence within your posts?

  7. MaxDrei,

    Customer is king. Reminds me of the parable of the Emperor’s New Clothes.

    What role do you see yourself playing in that parable?

  8. TAI “His defense is to go on attack.”

    Is it? Or is my defense to *appear* to go on the attack when I’m actually just engaging in some sort of blog comment jujitsu and really couldn’t give a crap?

    [cuts air with hands, creating whooshing sound]

    I eat sockpuppets for breakfast.

  9. Yea, and the discrepancy in google searches corresponds to when 6 started using Google heavily for work. I figure it must have been him alone which contributed those billions of searches.

  10. “My question is: can you point me to an example of you making a thoughtful contribution to any thread that relates to patent law? Because other than this familiar sounding pontificating and finger-pointing, I don’t recall you talking about a danm thing, ever.”

    Mooney is up to his old tricks again. His defense is to go on attack.

    Whether or not I have ever made a thoughtful contribution to any thread that relates to patent law does not diminish my capacity to make a thoughtful observation about the posting styles of Mooney and 6.

    “Right, I ignore questions. Do you have a question?”

    Regardless, there are have been dozens and dozens of questions that have been posed to you that you haven’t answered.

    Your classic response is to employ some reference to scat or just ignore the question. Also, you are likely to come out with a comment comparable to “Identify those dozens of questions that I have not responded to.” There have been people who have taken that bait in the past — only to realize that you’ve never had any intention of responding to them when they call you out.

    Mooney … there are patent trolls, and then there are patent blog trolls. You epitomize a “patent blog troll.”

  11. TAI: “However, the difference between 6/Mooney and many other posters is that when pressed upon why they take their provocative position they either babble with nonsense (e.g., 6) or simply ignore the questions (e.g., mooney).”

    Right, I ignore questions. Do you have a question?

    You said that there are plenty of things “we” talk about on this blog that aren’t serious. My question is: can you point me to an example of you making a thoughtful contribution to any thread that relates to patent law? Because other than this familiar sounding pontificating and finger-pointing, I don’t recall you talking about a danm thing, ever.

  12. “Instead, one has to be BOTH serious AND provocative, no? That’s a serious question by the way.”

    One can be provocative without being serious. All you need to do to be provactive is to take a controversial position. Anybody can do that as Mooney and 6 prove on a daily basis.

    However, the difference between 6/Mooney and many other posters is that when pressed upon why they take their provocative position they either babble with nonsense (e.g., 6) or simply ignore the questions (e.g., mooney).

    If you want to take a provacative position, just be prepared to explain why you are taking that position. For example, one’s philosophy and/or point of view may shade your opinion one way or another. As another example, you can explain why you believe something based upon your logical analysis — and then lay out that analysis.

    BTW — there is nothing wrong being “non-serious.” There are plenty of things we talk about on this blog that aren’t serious, and not being serious about those things won’t hurt your credibility. However, don’t be serious with your facts/analysis/logic and people will not take you serious.

  13. Hopefully without sounding too high falutin,

    Let me add one word: Respect.

    Respect the Law, respect others, respect yourself.

  14. Think, you wrote:

    “What will be interesting is to see whether you are serious or whether you are just trying to provoke a response.”

    but I gather from your advice that being unremittingly serious is the ONLY way to provoke a (more than transient) response in this learned blog. So, your two mutual exclusives aren’t mutual exclusives at all, are they? Instead, one has to be BOTH serious AND provocative, no? That’s a serious question by the way.

    And I do so agree with you. “Do as you would be done by” should be the watchword.

  15. “Tell me. What do you think? Is it already too late for me? Have readers already given up arguing with me, or can I still save myself, if I’m very very good from now on?”

    Yawn.

  16. “Tell me. What do you think? Is it already too late for me? Have readers already given up arguing with me, or can I still save myself, if I’m very very good from now on?”

    There are new readers to this board everyday — which is why 6 and Mooney continue to get people to argue with them. However, those arguments rarely last long, as the newbies learn their lessons.

    There are many versions of the “golden rule,” but one of the common ones is “do unto others as you would have others do unto you.” If you want to treat people to treat you seriously, you need to treat them seriously — and if you don’t know what that requires — just think what would Mooney or 6 do, and then do the opposite.

    What will be interesting is to see whether you are serious or whether you are just trying to provoke a response.

  17. As you say, Think, if nobody will argue with me any more, then the fun goes out of it. You make a very good point about “consequences”.

    Tell me. What do you think? Is it already too late for me? Have readers already given up arguing with me, or can I still save myself, if I’m very very good from now on?

  18. “Sometimes they go too far, but that’s the luxury of the pseudonym, and (I had thought) part of the fun of blogging. And I don’t see this thread as a written examination, to see who gets the best mark in ‘logical skills’.”

    Max — your problem is that you don’t recognize the power of the pseudonym “MaxDrei.” You are on a mission to extol the virtues of the EPO patent system, and the way you achieve this is by establishing your credibility and the soundness of logic in your arguments. Everything you write gets attached to “MaxDrei,” so when you stop thinking logically because you are having “fun” and attempting to provoke an outrage, people start to question your seriousness when you are writing about the virtues of the EPO.

    The problem that 6 and Mooney both face is that they also like to have fun and provoke. They have made attempts to make serious posts. However, after they have, time and time again, established their non-serious side, few people have a serious discussion with them. Also, they have a tendency, even when engaging in a serious conversation, to end the conversation (particularly when it isn’t going their way) with posts best described as ‘attempts to provoke an outrage.’

    Perhaps all you 3 are cut from the same cloth … comfortable jumping from serious poster to troll from one post to the next. However, just realize that those actions have consequences.

  19. Nobody is banzed from PO. Even Just just posted. He is the foremost banning whiner around here. Obviously nobody is banned.

    I should add though that I might be over at watchdog. It is either that or I’m having tech troubles.

    In any event No Doubt is still rockin hard playin mostly the same ol tunes.

    Finally, I don’t think that Noise would know an “escape” if it bit her right on the behind.

  20. JAOI, good point. Prof. Crouch, please excuse my poor attempt at a joke, and please don’t take offence.

    Fact is, JAOI, I was having a dig at posters who accuse others of using different sobriquets, but I really can’t be bothered to keep track of which poster displays which character.

    When I’m trying to earn a crust, taking instructions from US patent attorneys, I must button my lip. Customer is king. But, here, anonymous, I have licence to be lippy, and simply indulge myself. Sorry if it upsets some readers.

  21. MaxDrei said:

    “…Perhaps Noise is just one of many pseudonyms of a certain “Dennis Crouch”…”

    Max, if I were Prof. Crouch (and I’m not), I would take offense at your supposition.
    In my humble opinion, your ability to judge a person’s character is lacking. I have every confidence that Prof. Crouch does not and would not stoop to the type of shoddy tactics which concern you.

  22. Noise above Law said…

    “Fear not for being banned, without the noise, Patently-O would not have the train wreck effect. Our mutual banter is in no danger of being expunged.”

    I agree with Noise above Law…

  23. Noise above Law said:

    “And if you place Malcolm and 6 at some higher level, you REALLY need to think before you post.”

    MaxDrei said:
    “Thank you Jules, for encouraging the child in me, but a horrible thought just struck: Perhaps Noise is just one of many pseudonyms of a certain “Dennis Crouch”. In that case, crikey, I hope he isn’t now going to ban me from Patently-O. Dennis, I don’t want to be banned. Please. I’m having far too much fun.”

    Jules said…
    “Bravo.
    MD: 1, Noise: 0”

    I disagree with Jules.

  24. The likes of Jules scoring for MaxDrei is just as funny as MaxDrei looking up to Malcolm and 6.

    As far as crap, MaxDrei, if you were half as attentive to how I describe your posts as to what you actually post, the point would be moot.

    Fear not for being banned, without the noise, Patently-O would not have the train wreck effect. Our mutual banter is in no danger of being expunged.

  25. And another thing, Noise. In my working life, earning fees for my time, I get my orders from an instructing patent attorney. Just occasionally, the attorney is pompous, and the instructions are arrogant. This blog gives me opportunities to relieve myself of the ensuing frustrations. As nobody on this blog is my client, I have a chance to be rude. Thank you Dennis, for making the blog available. Thank you Noise, for giving me a target direction, in which to blow my raspberries. Ahhhh, I feel better now.

  26. Thank you Jules, for encouraging the child in me, but a horrible thought just struck: Perhaps Noise is just one of many pseudonyms of a certain “Dennis Crouch”. In that case, crikey, I hope he isn’t now going to ban me from Patently-O. Dennis, I don’t want to be banned. Please. I’m having far too much fun.

  27. Noise, you really are an expert: an expert in scooping up and deploying synonyms for faeces. I counted three in your early morning 07.39 visit to the typing stool. I would suggest that you try to relax, and to purge this obsession out of your head. I’m really not in the mood to take advice from you, about what I should and should not smear all over this blog. And I’m too busy with other things to spend more time here. I think I already have the balance right, thank you very much, between the cost in my time and the benefit I get. If it upsets you, well, tough and as you say, you (and every other reader) are perfectly free to skip it or ignore it.

  28. “And I don’t see this thread as a written examination, to see who gets the best mark in “logical skills”.”

    Obviously, and that is why your writing remains scat. You don’t take expressing your thoughts seriously enough. I am not saying that all writing on blogs is “serious” stuff. I am saying that you should endeaver to express yourself to the best of your ability at all times. Your willingness to post excrement “for the fun of it” is perhaps more telling than when you post “…but I want to learn”.

    Please expend the effort to think before you post and you will not only learn more yourself, but others may also learn from what you post (at least others may learn to not ignore your crap).

    And if you place Malcolm and 6 at some higher level, you REALLY need to think before you post.

  29. Znutar, I like your style, it reminds me of, well, my own.

    Working in-house for a foreign company I have consistently advised against playing the RCE game, not just with the PTO but with outside counsel as well.

    Its amazing to see some of the crap from outside counsel that passes for billable work product while failing miserably to address the issues in a meaningful way and simply prolonging prosecution through an endless series of RCEs.

    It seems as if the days of rubber-band busting file histories should be over. Unless you just have a really long specification and a lot of references.

  30. Noise, don’t take it so seriously. You write:

    “It appears that you want to provoke by playing the fool…Do you understand yet why I put you and your logical skills in the same class as 6 and Malcolm? As I said before, I believe that you can do better. Why you choose not to, well, that is your choice.”

    I don’t mind at all if you say you put “in the same class” as Malcolm and 6. In some specific ways, I envy each of them and wish I could play at their higher level. Sometimes they go too far, but that’s the luxury of the pseudonym, and (I had thought) part of the fun of blogging. And I don’t see this thread as a written examination, to see who gets the best mark in “logical skills”.

  31. “We all know this goes on. We don’t need serial numbers.”

    Oh, when you put it that way it’s much more convincing.

    Carry on.

  32. MaxDrei,

    Someday you might learn that getting a reaction and actually advancing your position are two very different things when it comes to the debate of ideas.

    Also, you confuse the strength of your argument (which has none), with the response, whose strength belongs to your opponent, not to you. My response is largely directed to you, rather than your particular argument. “I’m waiting” merely asked you to be more clear about what your non-argument was. What you put forth as an argument is clearly wrong, and clearly trolling for a response, but you do not provide anything that advances your stated position. There is simply nothing in your stated position for me to respond to – it is that vacuous.

    Let me put it another way. It is one thing to tell a good joke and laugh with people. It is quite another to play the fool and be laughed at. Both cases have laughter, but that laughter is not the same.

    It appears that you want to provoke by playing the fool…Do you understand yet why I put you and your logical skills in the same class as 6 and Malcolm? As I said before, I believe that you can do better. Why you choose not to, well, that is your choice.

  33. Enough blah blahin’ about the board n their backlog.

    No Doubt is close to town tomorrow, which of you patent chics wants to go?

  34. Re patent law professors, yes they can provide sometimes interesting research, studies and perspectives. However, when it comes to pontificating on USPTO operations and USPTO practice changes, I would wager that these days one could count on less than the fingers of one hand all those teaching patent law in law schools who have had any actual experience preparing and prosecuting patent applications in the USPTO [besides Dennis Crouch and Lisa Dolak].

  35. The Posts are numbers 1 – 80. I had in mind Newton’s Law, that to every force (wearing down the Examiners) coming from attorney prosecutors, there will be an equal and opposite reaction (vividly evident from the thread, taken in aggregate).

    My argument is a bit flimsy, I grant you both, but nevertheless (you see) it was forceful enough to provoke a force of outrage in reaction.

  36. MaxDrei,

    Your scat continues. Please check between your ears before you post. Are you purposely exchanging wearing down of the “examiner” with wearing down of the “applicant”? Unless you think googling, cut and paste of form arguments, and typing “applicant’s arguments are not persuasive” without explanation are too tough and can wear down the poor examiner…

    Common sense indeed.

    The professors earn their scorn with their agendized postulates. Let’s see them analyze the Office bungling and avoidance of following the President’s directives that before making new rules, the Office should verify what the source of the problem is (themselves and the ridiculous Count system). It is truly painful to see such mismanagement and power grabs. For the professors, you should recognize the difference between scorn and jealousy.

    As to “disinterested channel that is effective to communicate the truth”, your manner of posting may make things disinteresting, but will not communicate the truth. You merely add Noise that distracts from what the focus should be.

  37. “This thread rather suggests that the professors did know what they were writing about, after all.”

    Please identify those posts that “suggests” this. The posts are numbered, so it should be rather easy for you.

  38. I don’t need an application number. I know its true. I’ve seen it on my own desk. I have a case on my desk now. After 13 office actions and 6 sets of cited documents, the examiner finally found a few claims allowable, so I put them in independent form. A month or so later I received a call from the examiner wherein the examiner said the claims were allowable except for 101/bilski. I got the file, reviewed the claims and called the examiner back and read the claims out loud, slowing down and enunciating when I got to the bits that recited hardware. The examiner indicated that a discussion with supervisors would be in order. Six weeks later I called to see what the deal was. The examiner indicate that supervisors agreed that there was no 101 issue but “suggested” yet another search…a new non-final landed on my desk last week…. with extremely week newly cited references.

    We all know this goes on. We don’t need serial numbers.

  39. I find myself reminded of the verbal abuse heaped on those professors of patent law, who dared to postulate a phenomenon they called the “wearing down” of Examiners. “Rubbish” they were told, “There is no such thing”. This thread rather suggests that the professors did know what they were writing about, after all. But, apart from that, it’s only common sense, anyway. As ever, we don’t need professors to tell we patent practitioners what we know already. The public needs them, however, as a disinterested channel that is effective to communicate the truth to politicians and others who will make the wise decisions that will thereafter rule the lives of mere patent attorneys. I guess that’s why the professors suffer the verbal abuse: professional jealousy.

  40. “This is the largest backlog on record and tends to explain why the Board is attempting to implement procedures to streamline the process.”

    Is “streamline” the correct word, Dennis? I can think of many words to describe the proposed “procedures.” All of them are negative and none of them certainly is “streamline.”

  41. My guess is that the Examiner’s were afraid to write Examiner’s Answers for weak or bogus rejections because the Board might slap them down bad. But now since the Board won’t get to the appeal for many years what do they to be afraid of as a practical matter?

  42. “If the inventor works for famous company, does that ever work in favor of an application?

    For example, if an Examiner gets an Apple (the computer/iProduct company) application, what’s the chance that the Examiner will bear some goodwill towards Apple, and will be more likely to allow the case? Or, at least, be easier to work with?
    Or Google? Examiners are probably aware of Google’s reputation for hiring the smartest engineers/inventors in the world.

    Are there any applicants that Examiners strongly dislike–like, no matter how inventive an application is, they’re gonna give the applicant a tough time no matter what?”

    There’s a difference between “easier to work with” and “favoring/disfavoring allowance of the case”.

    The “easier to work with” is a function of the law firm and attorney on the case. There’s a couple of law firms I love dealing with because prosecution is far more relaxing and faster. Prosecution is this way because the attorneys have reasonable expectations of the type of coverage they can get.

    Cases generally aren’t favored/disfavored for allowance based on either law firm or assignee, however. If there isn’t allowable subject matter, it won’t be allowed.

    But, naturally, if you’re a known litigant in IP then you’re gonna get a tad more scrutiny. There’s more significant things than the assignee that will bring about the wrath of a patent examiner, though. Like blatantly adding new matter.

  43. Green_Light,

    You may be interested in the following Malcolm quotes:

    “…Stop lashing out, mkay? It’s childish.”
    Reply Jun 01, 2009 at 02:07 PM

    “…It’s about engaging commenters with ideas which, whether correct or incorrect, are articulated coherently and defended with some semblance of honesty and credibility.”
    Reply Jun 01, 2009 at 03:01 PM

    Yes, Malcolm actually type that. Honestly.

  44. “The SPE has to sign off on re-opening, but if the SPE is on board is there any way to break out of that loop?”

    What if the SPE is the examiner who has the case 0.0?

    “Does anyone know the criteria for exhausting your administrative remedies? I mean when the problem is that the administrators are sticking you in an infinite loop, you can’t formally exhaust them. Is there some kind of constructive exhaustion? ”

    The criteria under the statutes appear to be “the board has rendered a decision which applicant is unhappy with”. If you never get to the board then you never get a rendered decision.

  45. Glad to see that over the months . . . you’ll still go straight to personal and professional disparagement.

    Way to keep it classy.

  46. MM,

    There was no 2004 camaro. The camaro and firebird were canceled in 2002, and the camaro is just now available as a 2010 model.

    Kthxbye.

  47. The SPE has to sign off on re-opening, but if the SPE is on board is there any way to break out of that loop?

    Writ of mandamus perhaps?

  48. “Was the Examiner not aware that you could appeal to the Board, and then to the Article III courts?”

    If the examiner reopens and rejects and reopens and rejects and reopens and rejects then your case never goes to the board, and thus never sees the courts because the board never rendered an opinion. That is, I believe, what the deal is.

  49. I’ve occasionally seen a strategy from an Examiner where they file one worthless rejection after another. I mean not even close and getting colder with each iteration. The Examiner sometimes give a new non-final and sometimes sticks by his guns through final, advisory, pre-appeal. Then I file an appeal and suddenly the rejection that the Examiner said was solid 100% right gets withdrawn… in favor of a new, less apt rejection.

    The only way I found around this was to call the Examiner’s supervisor when I filed the next appeal and complain. I would list off every office action, advisory action, pre-appeal conference and appeal brief filed so far and say “please either let it issue or make the Examiner fight the appeal and let it issue if he loses, because my client is getting denied a patent that he deserves, not because the Examiner has a valid rejection, but because he is willing to send an infinite number of invalid rejections”.

    So far whenever I have called the SPE in a case like that we get an Examiner’s answer instead of a re-opening. No rulings on any of the appeals yet, so I don’t know how any Examiners who use those tactics will respond.

    Does anyone know the criteria for exhausting your administrative remedies? I mean when the problem is that the administrators are sticking you in an infinite loop, you can’t formally exhaust them. Is there some kind of constructive exhaustion?

  50. “The Examiner promised to keep rejecting it forever and that there was nothing we could do about it.” Was the Examiner not aware that you could appeal to the Board, and then to the Article III courts?

  51. “advise your client to appeal” — with the bpai backlog increasing at an exponential rate, appeals may not be a good option.

  52. “Your case would be dismissed for failing to exhaust your administrative remedies. ”

    Good to hear about that. Seems like PDS may have told me about that a long time ago.

    Meh, you can always fall back on the good ol’ submitting claims that appear, on examination, to be entitled to a patent under the law. Works like a charm, you should try it :)

  53. “At least try to make them interesting. For example, I heard from a friend of a friend who had prosecution over a thousand patents to issuance over the past ten years that in the past six months he has TWICE received Final Rejections in the mail which were marked with suspicious brown stains. A small piece of the stained paper was sent for lab analysis. I’m not at liberty to discuss the results but let’s just say the stain was “human in origin.” Also, back in March, one of the clients who received one of these stained Office Actions also was woken one morning when he heard some commotion outside. When he ran out, he saw a 2004 Camaro just like the one John Doll drives speeding away. And he found a deer head stuffed in his mailbox. One of Senator Leahy’s aides told my friend’s friend that the Senator was furious about this and promised a full investigation after the Dead finished their Spring tour. I’m not sure what ultimately happened, probably a sternly worded letter. In any event, things seemed to have quieted down and my clients have not informed me of any further incidents like this but that doesn’t mean that it isn’t happening to someone else.”

    10/10, would read again.

  54. “Are there any applicants that Examiners strongly dislike–like, no matter how inventive an application is, they’re gonna give the applicant a tough time no matter what?”

    There is one guy who just got finished insulting my bud in another AU on Mon. due to my bud designating something as a certain type of line compared to a different type of line. My friend correspondingly spent all of today finding him a 102. I doubt that guy will get a patent anytime soon, but he is welcome to try.

  55. “If the inventor works for famous company, does that ever work in favor of an application? ”
    Not really. If the claims are crap they’re going to get rejected either way. What works out well for famous companies is having the $$$ to hire better lawyers and go deeper in prosecution.

    “Are there any applicants that Examiners strongly dislike–like, no matter how inventive an application is, they’re gonna give the applicant a tough time no matter what?”
    Not really. There are certain applicants I notice that frequently file overbroad claims, but have no ill towards them because those cases are easier to reject. What makes more of a difference is the law firm or lawyer.

  56. boss, you miss the point, which is to advise your client to appeal rather than go the route of an RCE (of course, when the rejection is not good). There are hours to bill with appeal, and the case is moving forward, at least in some respects, as opposed to filing an RCE and hoping the dishonest PTO will come around and allow the case.

  57. Let’s not forget that there are patent attorneys out there who play the RCE “more billable hours” game.

    Law firms are a business. Therefore, attorneys will continue to prosecute a patent application so that the client pays the maximum possible number of billable hours that the client will tolerate.

  58. I got question:

    Case where P sues two D’s for infringement in different dist. cts. D1 files for re-exam and gets case stayed after Markman ruling. Re-exams continue on. D2’s case is not stayed. So, D2 is faced with a Markman ruling that is not to D2’s liking, and there is lots of prosecution history in the re-exams that the first Markman did not consider.

    Is there a fed. cir. case on point that the D1 Markman ruling should be given little deference since there was a lot of prosecution history and the D1 Markman was not appealed to the federal circuit?

  59. “I would stand up to them and be fired before I would screw someone over like these people do. I have in the past (they backed down), and if I was still there, I would do the same.”

    Hear hear. Lets hope more examiners find the courage to stand up to superiors who urge them to arrive at a particular result, regardless of what the rules say.

  60. “The examiner at a personal interview about five years ago, after the case had already been pending four years, told the client and me that her supervisor said that the case would never be allowed.”

    Application number, please?

    Vapid anecdotes. It doesn’t matter if one or one thousand examples are provided. Without application numbers, they are meaningless.

    At least try to make them interesting. For example, I heard from a friend of a friend who had prosecution over a thousand patents to issuance over the past ten years that in the past six months he has TWICE received Final Rejections in the mail which were marked with suspicious brown stains. A small piece of the stained paper was sent for lab analysis. I’m not at liberty to discuss the results but let’s just say the stain was “human in origin.” Also, back in March, one of the clients who received one of these stained Office Actions also was woken one morning when he heard some commotion outside. When he ran out, he saw a 2004 Camaro just like the one John Doll drives speeding away. And he found a deer head stuffed in his mailbox. One of Senator Leahy’s aides told my friend’s friend that the Senator was furious about this and promised a full investigation after the Dead finished their Spring tour. I’m not sure what ultimately happened, probably a sternly worded letter. In any event, things seemed to have quieted down and my clients have not informed me of any further incidents like this but that doesn’t mean that it isn’t happening to someone else.

  61. This is a question for the Examiners on here (triggered by a comment or two above):

    If the inventor works for famous company, does that ever work in favor of an application?

    For example, if an Examiner gets an Apple (the computer/iProduct company) application, what’s the chance that the Examiner will bear some goodwill towards Apple, and will be more likely to allow the case? Or, at least, be easier to work with?
    Or Google? Examiners are probably aware of Google’s reputation for hiring the smartest engineers/inventors in the world.

    Are there any applicants that Examiners strongly dislike–like, no matter how inventive an application is, they’re gonna give the applicant a tough time no matter what?

  62. “Take your case to the District Court.”

    Your case would be dismissed for failing to exhaust your administrative remedies.

  63. “The Examiner promised to keep rejecting it forever and that there was nothing we could do about it. This sort of thing has been going on for a long time.”

    I swear some PTO employees need jail time. I would stand up to them and be fired before I would screw someone over like these people do. I have in the past (they backed down), and if I was still there, I would do the same.

  64. “The Examiner promised to keep rejecting it forever and that there was nothing we could do about it.”

    Who amongst you predicted that this behavior was perfectly valid about a year ago?

    Me.

    Who proposed the solution to the behavior?

    Me.

    Take your case to the District Court.

  65. I have a similar “black-listed” case. The examiner at a personal interview about five years ago, after the case had already been pending four years, told the client and me that her supervisor said that the case would never be allowed. We have filed a pre-appeal brief, which forced the examiner to withdraw her rejections and issue new rejections. Office action after office action, all with bogus rejections.

  66. broje: “The Examiner promised to keep rejecting it forever and that there was nothing we could do about it.”

    Was that promise made by phone? Odd that nobody bothered to record it, especially if this was such a “famous” case. What was the application number, by the way?

    Where is JAOI, by the way, to bemoan these anonymous attempts to slander the PTO? I thought that was, like, the worst thing ever?

  67. “I had an unreal conversation last year with an Examiner who indicated that the application had been ‘black-listed’ and would ‘never be allowed.’ Despite the fact that all of his rejections were lame and he couldn’t come up with better art. The responses were taking $5k+ to respond to 64 pages of ridiculous rejections, so the client just gave up. There’s ‘promoting the progress of science’ for you.”

    You’re not the only one who’s had this conversation with an Examiner. And they are tougher on patents filed by public figures. One said that the application was famous throughout the USPTO and that Examiners throughout the USPTO were looking for art but not able to find it. Nevertheless, it was repeatedley rejected and appealed and examination reopened over and over again. The Examiner promised to keep rejecting it forever and that there was nothing we could do about it. This sort of thing has been going on for a long time.

  68. Question: are there more or less patents issuing monthly right now compared to, say, the summer of 2000?

  69. Why does David Letterman hate patents? Why does the PTO hate America? Don’t these people understand: patents are freedom. When people are unfairly denied their patents, Abe Lincoln cries.

    By the way, are there more or less patents issuing every month now compared to, say, the same time period in 2000? Just curious.

  70. “…who cares that the patent office jerked around his client?”

    I care. In the unlikely event that you are ever admitted to practice before the PTO, you’ll care.

  71. “That’s a great anecdote! Very compelling. You should have included something about the inventor being unable to afford chemotherapy for his kid because all his licensee’s disappeared. That would have made it even better.”

    Even though you haven’t seen them, you know they were crap claims that are unpatentable, right? And, in that case, who cares that the patent office jerked around his client? The right result was reached.

    :\

  72. Storyteller: “I had an unreal conversation last year with an Examiner who indicated that the application had been “black-listed” and would “never be allowed.” Despite the fact that all of his rejections were lame and he couldn’t come up with better art. The responses were taking $5k+ to respond to 64 pages of ridiculous rejections, so the client just gave up. There’s “promoting the progress of science” for you.”

    That’s a great anecdote! Very compelling. You should have included something about the inventor being unable to afford chemotherapy for his kid because all his licensee’s disappeared. That would have made it even better.

  73. “… do i work with you?”

    I don’t know. Where do you work?

    “or is this something that happens even more frequently than i had feared?”

    It happens A LOT. The original OG notice on the pre-appeal program ends with an acknowledgement that it is possible that even though the applicant was told to proceed with filing the brief, prosecution may be re-opened after the brief is filed. The OG notice claims that it is envisioned that such circumstances will be rare.

    Right. It’s rare.

    ROFLMAO

    You think the PTO is tracking that “rarity”? If they are, you think they’re ever gonna release the numbers?

    We were discussing after final practice and appeals here the other day. The usual shenanigans pulled by examiners trying to milk RCE’s. One person said, “Call the group director. You’d be surprised at how little they know of what’s actually going on.”

    I replied, “No I wouldn’t. They don’t know anything.”

  74. … do i work with you? or is this something that happens even more frequently than i had feared?

  75. the pto needs to enact the silly appeal brief rules, so that they can get rid of more appeals on little technicalities

  76. “I love to appeal. What I love even more is appealing immediately after reopening. I wish I could see the examiner’s face when he first sees them. A distant third to my favorite things is making love.”

    There really are girls on my interwebz.

  77. “gate to open if the Examiner gets to the point he is preparing an Examiner’s Answer or two (and reply briefs) each and every week.”

    He ll, I don’t even mind E answers. The only thing I ha te is waiting on the go ahead to write it.

    Although, getting an allowance now isn’t exactly the hardest thing in the world. I’ve got higher ups that are suggesting possible allowance when there is even a small chance that we couldn’t interpret a perfectly valid 102 in the manner in which would reject the claim. The rationale? “we’re only the first filter”. Even so, I’m not exactly on an allowance spree.

  78. If they would just stop telling the Examiners to reject everything, not just bogus claims, maybe we wouldn’t have to appeal so often. It is NOT KSR, the broken count system, “quality reviews”, and PTO management created this problem. As far as government goes, my experience is that the BPAI is actually quite good (slow, but fair).

    I had an unreal conversation last year with an Examiner who indicated that the application had been “black-listed” and would “never be allowed.” Despite the fact that all of his rejections were lame and he couldn’t come up with better art. The responses were taking $5k+ to respond to 64 pages of ridiculous rejections, so the client just gave up. There’s “promoting the progress of science” for you.

  79. I wish everyone here would stop for a minute and look at what we’re doing.

    About 30 comments back Malcom Looney posted one of his typical cretinous, irrelevant, everyone-but-me-is-a-troll diatribes in response to my earlier comment on declining due process — and virtually everyone has ignored his rant.

    Well, done!!

    I can not think of a single more effective way to enhance the quality of this blog than to ignore Looney’s ad hominems.

    Now, if we could just get the country to do the same with David Letterman and his ad hominem, pedophile “humor.”

  80. Dennis said:

    “87% of the appeals involve nonobviousness arguments”

    and another contributer surmised that the true number of appeals pending is miles higher than the published figure.

    which prompts me to make two points:

    1. Before the European Patent Office started, obviousness was not examined at the UK Patent Office. It was deliberately reserved by the Statute for resolution in inter partes proceedings. Examiners concentrated on clarity and novelty. Everybody knew that, if ever the patent were to be litigated, obviousness issues would consume a large part of the budget. But the loser would be paying.

    2. Since 1978, Problem and Solution Approach at the EPO has eaten obviousness for breakfast.

    What a pity SCOTUS lacked the bottle to deliver to the PTO a workable tool for disposing of the obviousness issue expeditiously.

  81. Don’t bother and the other posters are right.

    In the criminal context, the court system can’t handle the burden if too many of the accused don’t accept a plea and insist on going to trial.

    If we want the patent system to change, we must appeal. It won’t take long for the allowance gate to open if the Examiner gets to the point he is preparing an Examiner’s Answer or two (and reply briefs) each and every week.

  82. “We are in the process of looking at this, my preliminary study indicates that 87% of the appeals involve nonobviousness arguments.”

    This number alone is fairly meaningless. What it is reflective of is that about 87% of all office actions include at least one 103 rejection. However, although the rejection may be argued, the rejection could depend upon a 102 rejection (i.e., 102 reference A fails to show Y; thus 103 rejection of A + B also does not show Y). Also arguing 103 rejections isn’t all about KSR. There are a lot of Graham arguments to be made … i.e., Examiner relied upon reference A to disclose X and Y and B to disclose Z, but A fails to disclose X and B fails to disclose Z.

    I doubt you are going to get meaningful information from your study.

  83. “I love to appeal. What I love even more is appealing immediately after reopening.”

    I enjoy this too. Filed a pre-appeal. Got the notice to proceed to BPAI. Filed first brief. Re-opened. Rejections even stupider than the one appealed. Filed second brief. Notice of allowance mailed yesterday.

    Hey examiner, you coulda got that count a LONG time ago.

    No more RCE’s for you!

  84. ” how does KSR “contribute to the backlog”?” Because there is no set test which the PTO and the Applicants can apply equally.

  85. Les said: Why are there so many appeals?

    We are in the process of looking at this, my preliminary study indicates that 87% of the appeals involve nonobviousness arguments. I will have a more complete post on these results next week.

  86. Why are there so many appeals?

    Could it be the sudden increase in ridiculous rejections under Dudas and now under Bilski?

  87. I love to appeal. What I love even more is appealing immediately after reopening. I wish I could see the examiner’s face when he first sees them. A distant third to my favorite things is making love.

  88. Patent reform needs to die to save the PTO work, additionally the Office needs to stop rewarding rejection and allow the caes that should be allowed to be allowed.

  89. The quality of examination is awful. The Examiners, nor their supervisors, follow the rules that are in place. I have no doubt that this is due to orders from on high and unreasonable time pressures, along with the afore-mentioned lack of experience. The real concern here is with this backlog it is becoming less and less likely that you’ll get a fair shake at the BPAI. Eventually those folks will become too overworked to follow the rules or think things through.

  90. What is even funnier is the backlog is actually much much MUCH bigger than the numbers indicate. I receive a dozen (small exaggeration) notices from the board a month that appeals (not ones I have prepared, but ones I review for others) are not ready to be docketed. The “errors” are so minor they are laughable – but it is clear it is done to keep another appeal off the docket. If there are 10,000 appeals docketed, there are undoubtedly THOUSANDS more undocketed that should have been docketed.

    PTO, lie (or is it lay) down in the bed you made. Hope it’s comfortable.

  91. I just had a brief go from “reply brief noted” to “appeal number assigned” in less than a week!!! That typically takes months! Looks like the BPAI has stepped up their docketing procedures.

  92. I’m glad that Dennis jumped on the bandwagon.

    The reasons for the backlog are simple. As I laid out in a post awhile ago, right around when our most recent “dear leader” became a part of the USPTO, the number of decisions being issue by the BPAI started to drop dramatically.

    At around the same time, examination quality worsened as examiners were persuaded one way or another (e.g., with the second pair of eyes program) not to allow applications. Practitioners, when faced with stretched and legally unfounded rejections, began to appeal more and more.

    Then the continuation package hit, which effectively limits an applicant to limited amount of bites at the apple. As such, instead of filing a RCE, it became much imperative to save the RCEs and appeal bad rejections.

    Finally, in the face of enactment of the new appeal rules, many practitioners filed as many appeals as possible before December of 2008.

    For the longest times, many practitioners have been reluctant to file appeals. However, now that many have filed appeals over the last year or so (and seen the positive results of reopened prosecution). As such, the genie is out of the bottle, and appeals have become a much more used prosecution vehicle than ever before.

  93. If, after years of quality = reject, the only way you can get the PTO examining corps to pay attention is by filing an appeal, then there’s going to be a rise in the number of appeals filed. No big surprise here, but it’s disheartening and, in the long run, self-defeating. Even more so when you see that the PTO’s response to the rise in appeals is the same as its response to the rise in the number of continuations: try to deny applicants their right to be heard; and continue to stick its head in the sand instead of getting on with the business of examining patent applications (or delegating that job to other competent patent offices) so that what’s allowable gets patented and what doesn’t doesn’t.

  94. An appeal is a relatively inexpensive way to achieve a two-year patent term extension. The examining backlog can be reduced by encouraging rather than discouraging first action allowances. A very few enlightened examiners even initiate attorney interviews before a first office action.

  95. Actually, they would say they already do, and with maximum efficiency, getting each issue thoroughly explored, then settled, before moving on to the next one. It’s a defensible position. What comes out at the end of the multi-pass mill is of good quality. It is just that it can take ages before it emerges. My intuition tells me that’s wrong.

    But, depending on the public policy balance between the right to enjoin and the right to compete, it might even be the best option. The German auto industry doesn’t do so badly, does it?

  96. Znutar, readers, do you see any prospect of emergence at the USPTO of the old “ping pong” routine as practised by a distressingly high number of EPO Examiners?

    By that I mean that the Examiners take any chance they get, even on the first issue up for resolution, to issue a Decision, in effect booting the case upstairs to the Board of Appeal on just that one issue. Then the Board has no fair choice except to remit downstairs for consideration of all the other issues? And so it continues, year upon year, issue by issue.

    Great way to build a backlog. But then, in the EPO, with annuity fees on an upward ramp, and with EPO Examiners paid out of the EPO coffers, what else should a poor Examiner do?

  97. Pile on, dudes. I’m taking cases up on appeal every chance I get, it seems. Screw RCEs. Been a long time since I’ve bothered. Why amend when the rejection is half-baked? I’m sick of getting form paragraph 7.37.04 (Unpersuasive Argument: No Suggestion To Combine) without explanation. I showed why the thing would no longer work for it’s intended purpose, if you think it would still work, or it has some different purpose, jot down a sentence or two. I’m on a third non-final OA with an examiner that keeps finding new ways to reject the claims, all of which could have been raised initially. Time and again I set out an issue, quoted a rule, fit the facts to the rule and show that the rejection should be withdrawn. If I’ve not successfully traversed the rejection, then please explain at what point in the analysis of [what the broadest reasonable interpretation of the term is] we diverged. And then there’s form paragraph 7.37.02 (Unpersuasive Argument: Bodily Incorporation). You said in your rejection it would be obvious to modify W with the Y of Z, with no other clue, so if you weren’t proposing to bodily incorporate Y into W, what were you thinking of? Sometimes I’ll take a stab at hypothesizing what, other than bodily incorporation, the examiner might be trying to signal to me by putting a word in quotes. But even thoughh I’ve made reasoned arguments against modifications under 103 that were not strictly bodily incorporations of a specific feature into a primary reference, back comes form paragraph 7.37.02 without further elaboration. Hell yes I’m appealing. I’ve not been told why my arguments were not pursuasive, only that they weren’t. Repeating the one sentence from the first office action, this time with words underlined, doesn’t really give my clients much to go on. I can’t advise clients to pay another $740 for another round at that dance, without extenuating circumstances. I’d rather take a chance with the BPAI in those instances where examination isn’t reopened (50/50). In other words, why in 50% of my cases that get to final did I have to write an appeal brief to get another rejection that’s no better than the first? So come on, everyone, let’s flood the BPAI docket. Yeehaw.

  98. I’m confused. Why would congress give millions to foreign investors that own our banks and prejudice the citizens of the United States by underfunding a government entity that we clearly desire and would like to utilize.

  99. PTO should immediately double the number of BPAI judges. (Should be pretty easy to find qualified people to fill the positions.) The delay in getting patent protection is totally unacceptable in today’s competitive commercial world.

  100. As the PTO has tightened the screws the past five or so years and the examiners have continued to play the RCE count game, Applicants and prosecutors are tired of the “game” and so are appealing many more cases.

  101. KSR contributes to the backlog of appeals by replacing a clear, easily interpreted standard with a vague standard. The examining Corps is not certain how to apply KSR, and the PTO has not issued much guidance on the issue. As a result, it is not rare to receive 103 rejections that cite a teaching of a subset of the claim limitations, and simply conclude that the remaining limitations are “obvious.” This is not only occurring with regard to software and business methods. I get these weekly for inventions in the areas of pharmaceuticals, construction, and genetically modified organisms. I think you are confusing the recent 101 issues with KSR, which only applies to section 103.

  102. “It will be interesting to see if the current PTO hiring freeze (which also applies to BPAI) will continue into FY2010. If so, I guess we can expect time from docketing to decision to increase to 1+ year or more. ”

    No decision as to whether or not we’ll continue hiring has been made yet was what the directors said. They did say that it looked likely we’d hire like 600, half of what we were hiring for awhile.

  103. It will be interesting to see if the current PTO hiring freeze (which also applies to BPAI) will continue into FY2010. If so, I guess we can expect time from docketing to decision to increase to 1+ year or more.

  104. Quotidian Dude: “KSR contributes to the backlog, of course, but likely not as much as Dudas’ reject, reject, reject policy in order to enhance “patent quality.”

    Translation: “If the PTO would just rubber stamp my client’s crap patents like it used to, we wouldn’t have to tell the client to file an appeal that probably won’t lead to an issued patent.”

    Seriously, how does KSR “contribute to the backlog”? What contributes to the backlog is crap patents and the failure of applicants to give it up already. There are more and more eyes on the crap all the time and it’s still being issued. And you think the PTO is OVERdoing it? Spare me.

    It’s understandable that certain entities and practitioners are in “too deep” to credibly back out now from their investment of time and money but, really, too bad for them.

    Take your crappy computer-implemented garbage, softy wofty baloney, and methods of profiteering and go home so the rest of us can get back to protecting the tangible products that actually accomplish goals other than lining the already well-lined pockets of con artists and other trolls.

  105. It’s a perfect storm, really, isn’t it? Anyone could see this coming.

    KSR contributes to the backlog, of course, but likely not as much as Dudas’ reject, reject, reject policy in order to enhance “patent quality.” Ha. Also, checking examiner’s allowances carefully and punishing examiners for too many allowance errors, while ignoring rejection errors leads to unjustified rejections, which leads to appeals.

    So, of course, to get things moving the BPAI reaches for the laxative of barring dissents and setting up new appeal rules, which are more draconian than the continuation rules.

    The whole thing begins to reek of due process demise, and makes anyone with a sense of fair play a bit sick at their stomach.

    Thank you Jon Dudas. Your legacy lives on.

  106. The PTO stats found at Dennis’ link only appear to include “appeals received” which I assume means appeals docketed. If 90% of appeals are reopened for prosecution by the TCs before being docketed by the BPAI (per David Boundy’s stats), then the total number of actual appeals filed by applicants is much higher than indicated by the PTO numbers.

  107. This might be due to the anticipated limits on RCEs and continuation filings. At one time applicants would use these to continue prosecution to try and find common ground with the Examiner, even if the quality of examination was poor. When the new rules take effect, applicants will either be stuck with poor decisions by the Examiner (resulting in abandonment) or appeal. The current inexperienced state of the examination corps being what it is, we should predict a continuing sharp increase in appeals.

  108. Don’t worry, Congress will pass Patent Reform and fix all of this. What? Instead of providing more resources to the Patent Office to improve quality and the backlog, they want give them even more work? We have sure have some smart cookies up there in Washington.

    Congress needs to give the Patent Office more money to hire more (qualified) examiners and BPAI judges to reduce backlogs and put more emphasis on quality. Plus, it will help Obama meet his goal of creating or saving 2 million jobs.

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