Backlog of BPAI Appeals in Ex Parte Cases Pending Resolution

PatentlyO091

According to the USPTO, the average BPAI ex parte decision now takes 31–months from the filing of a notice of appeal to the decision date.

42 thoughts on “Backlog of BPAI Appeals in Ex Parte Cases Pending Resolution

  1. I would estimate that declaration or affidavit evidence is filed in well under 10% of all EPO oppositions.

    There are 38 Member States in the EPC. unless you want to dispute validity in each such State, one by one, then oppose at the EPO and take out the patent in all States in one fell swoop.

    Mind you, if it doesn’t succeed, you just gave the patent a presumption of validity.

    Neither reason exists, for opposing at the USPTO, right?

  2. Given the 150,000+ patents issued each year, even an opposition rate of 1% would result in 1,500 post grant opposition proceedings. Per year. Even at .5%, the workload would be substantial.

    It’s impossible to predict what volume of usage any post grant opposition proceeding would generate, but to dismiss it entirely as a “scare story” is simply head in the sand thinking.

  3. “a new head judge, well known in patent law circles”

    Don’t be such a tease, who is it that you are talking about???

  4. God dammit you’re retarded. But, at least you arrived at your point. Almost anyway.

    Now that you’ve put forth your hypothesis, give us what evidence you have of causation, as opposed to your evidence of correlation you have put forth so far.

  5. PTO being wrong in their projections…

    Hmm, that be a double edged sword, no Paulie?

    Like how they be handlin their workload, or like in PTA,…

    Or would that be like callin it under-load-scare-story?

  6. The 8% EPO application opposition rate is the same big-over-load scare-story that was used by the PTO in their projections [proven completely wrong] for U.S. reexamination usage. There are several reasons why the EPO opposition rate is not a valid comparision. E.g., an EPO opposition has no judicial estoppel or jury-influence effect, win or lose, and does not preclude a second subsequent non-jury invalidity trial or proceeding against the issued patent in any of the national counties that provide them in which the patent issues. [It also seemed to me, in my limited experience, to be easier, simpler, cheaper and more flexible (different claims can offered in the alternative at almost any stage). Especially cheaper if done without declaration or affidavit evidence.]

  7. Notice improving quality is not an option

    Well, that depends on how ya “define” quality, now aint it?

  8. Dont know why my main man aint all over you for this Cy. If he be his normal self, ya be carpet bombed to oblivion by now.

    Course, my main man would have ta watch so that my observations be not crossed – that just might be too difficult.

  9. I wonder what will happen to the quality of decisions from the BPAI, under pressure to reduce this backlog. Will the quality drop, or will it stay the same? (Notice improving quality is not an option).

  10. Max can correct me if I’m wrong, but I think the stats show that about 8% of EP grants are opposed. If that same percentage were to be seen in the US, that would be a substantial workload for the BPAI.

  11. Paulie,

    What “scare stories” are you referring to? Are you saying that the process won’t be used? If that is so, why bother? If that is not so, then your point is what exactly? – that only those with no aversion to hiigh risk and expensive undertakings will use the process? Doesn’t that smack of catering to a certian type of (ahem, very large and established) entities? Why do ya think those that raise their voices for small entities are so up in arms? Think man, think.

  12. Re: “Now if post grant opposition is approved under .. Patent Reform and the associated duties given to the same BPAI ALJ’s, what do you think happens to the curve?”
    Not much, because the new 9-month-after-issuance-only post grant oppositions will rarely be filed, contrary to the scare stories. Because they will be risky and expensive. Because companies are not going to spend large amounts of money filing them unless they are really threatened by the patent, and a relatively small percentage of newly-issued patents are agressively asserted or sued on as compared to much earlier issued (older) patents. There is a long real-world track history on how rarely prior PTO 1.291 “Protests” or 1.292 “Public use proceedings” or even prior art citations, have been used by 3d parties to attack patent applications or patents.
    Even reexaminations are still a very small percentage of the total patents in force. [There, the real problem is that the PTO, including the Board, has not been handling them fast enough to comply with the "special dispatch" expressly required by the statute. No doubt the Board finds some inter partes interference appeals a PITA.]

  13. I think you’re right, ping. Kappos manages by numbers, which is generally a good thing. But here I’m afraid we’re just squeezing the balloon, as it were, and moving the backlog from one area to another. Now that the appeal process is broken, what do we do?

    Someone needs to understand that a major contributor to backlog in the art units I work with is simply low quality examination on the first 1-5 office actions. I know the standard rebuttal here is that it must be my fault if I can’t get my cases allowed. However, when the majority of my cases get 3 or more non-final office actions, and when a supermajority of the final office actions fail to stick, then something has clearly gone badly wrong, and it’s not just my inferior communication skills.

  14. That would be a Kappos’ regime decision – and makes sense from teh type O pressure being recieved and the perception that it is the first response that is more inexcusable (you can alwasy blame the applicant after the first response).

  15. I think passing through has it right, especially with his reason #3. While the percentage of my cases that are re-opened after I file a pre-appeal brief or appeal brief is still high, it used to be extremely rare that my notice-of-appeal matured into a docketed case before the Board. Recently the examiners seem more likely to file an answer, even on very weak rejections. I suspect that this is now increasingly viewed as a good way to kick the can down the road and relieve some of the pressure to reduce the delays to FAOM.

  16. At NJIPLA event on 2/23, Kappos said he appointed 7 ALJs the week before with a new head judge, well known in patent law circles, to be announced shortly. So at least 7.
    He also asked practitioners to consider leaving private practice to serve.

  17. Also, it’s only technically laziness if they use the time they saved to slack off

    Um, no – Ya be wrong on that – it be lazy if they avoid the work necessary – regardless of what they do with the time saved.

    By definition, things necessary must be done.

  18. Hmmm, now who would have wanted the BPAI numbers to look artificially low??????

    Hey passing, are you insinuating that the Office was engaged in manipulation to, oh say, bolster its case for law making purposes? Are you related to the HMS Boundy?

    I do remember the chuckles from the Office express business plan – reduce the backlog by any means possible does include illegal means.

    O the chuckles of the obvious and those still trying to deny that obviousness. Let’s just redefine things here too (sorta like redefining quality and winning). Rewriting history is such a great sport – even recent history.

  19. Buckets of chuckles at your expense 6.

    d e l a y e d – e f f e c t.

    You are aware that cases don’t go to appeal until typically at least 2-4 years has passed correct?

    So under whose watch did this mountain obtain? Under what philosophy are the appeals reacting to? Hint – place yourself in what was going on 2-4 years ago.

  20. I see major three reasons for this growth.

    1) Initially, it was the looming continuation rule package (now defunct) that made appealing a viable options since your ability to file RCEs was limited.
    2) The Dudas-effect. He may be gone, but all the new Examiners that came of age under his reign still have the taint.
    3) The new production rules/effort to get new cases out faster. An examiner gets a count for an examiner’s answer – beneficial when other ways of getting counts have lessened. Also, punting an application to the BPAI gets the application off the Examiner’s docket for several years, which allows for new FAOMs to be issued. A lot of birds get killed with one stone there.

    There was a time when an Appeal was rare. However, now that far more practitioners are using them and far more examiners are getting comfortable writing examiner’s answers, I can easily see how this number will continue to grow.

    FYI, the big jump in mid-2009 corresponds to when they caught up on all the docketing. Before then, I had applications noted by the examiner but not docketed for 4-6 months. Now, cases are docketed with a week or two from being noted by the examiner. As such, the pre mid-2009 numbers are artificially low. Hmmm, now who would have wanted the BPAI numbers to look artificially low??????

  21. Um, tard, he left around that time, Doll took over for awhile, then Kappos came in. Look at the graph. KSR comes out slightly before the graph begins. Cases rejected around that time start to see KSR rationales. You see a small bump in the numbers. All those cases file an appeal or an RCE and then appeal a year later, we start to see a larger and larger bump. Recession begins slightly after Dudas leaves, the bump slows its growth. Ever since the bump kept on growing, but has been a slower growth.

    “Two to four years, ya say, now dontcha? ”

    Yes I do tard. I have much better math skills than you do, and even if I didn’t, you still haven’t made a point ya jackas. But maybe you’ll try making one sometime. If you cannot be bothered to make a point in your next post then I’m through talking to your jackas.

  22. Ah yes – the added chuckle factor that the BPAI is actually selecting cases and previously used any Ol flimsy reason to kick excess back.

    Can you say Duffas Effect?

    (But say it r e a l – s l o w – for 6)

  23. Maxie, blah blah blah – we aint discussin the EPO, get it?

    Cant the BPAI grow“? – that would be a “no” – can ya guess why?

  24. You are aware that cases don’t go to appeal until typically at least 2-4 years has passed correct?

    What was NAL’s phrase 6? Something about han_ging yourself with your own rope?

    Jonathan W. Dudas served as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) until January 18, 2009

    Two to four years, ya say, now dontcha?

    How are your simple math skills there 6?

  25. You are aware that cases don’t go to appeal until typically at least 2-4 years has passed correct?

    What was NAL’s phrase 6? Something about hanging yourself with your own rope?

    Jonathan W. Dudas served as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) until January 18, 2009

    Two to four years, ya say, now dontcha?

    How are your simple math skills there 6?

  26. Like I said pingertard, changes in the lawl. Maybe you’d care to address my actual point in your supposed reply?

    “But ya did notice what did happen, didntcha? A return to the historical norms on patent grants…”

    I noticed that return start with the budget crisis under Doll, just as I predicted some months before it happened. But even if your messaiah was somehow tangentally involved he sure didn’t help the appeals backlog which is our current topic of conversation.

    “And maybes ya missed the minor detail (since your reading skills be as they are): “Currently the USPTO has received over 11,000 more patents as compared to this time last year” on the other thread.”

    So, what? 2% or 4% more patents were RECIEVED THIS YEAR? And that somehow affects the number of APPEALS filed THIS YEAR? You are aware that cases don’t go to appeal until typically at least 2-4 years has passed correct? I forgot, I’m talking to a tard who brings up irrelevant information routinely.

  27. Dennis–possible to also get numbers on specials?

    Would be interesting/enlightening to see how much quicker (if at all) such appeals are resolved.

  28. The EPO had post-issue opposition from the get go, in 1978. It started with three Technical Boards of Appeal (one each for mech, EE and chem). Now it has 24. And it is recruiting like crazy, for more Board of Appeal Members. They all have to operate in all three EPO languages (English, French and German). Bit of a damper, that. But pendency at the EPO is steady, or even reducing. Can’t the BPAI grow, at least as easily, to keep pace with the demand, and drive down pendency?

  29. “At NLIPLA last week, Kappos said appeal backlog is growing at a rate of 1 month each month. (i.e., twice as many appeals are being filed than can be disposed per month).”

    Now imagine what the curve would look like if pre-appeal and appeal conferences weren’t filtering out 80% of the applications in which a pre-appeal request and/or brief are filed.

  30. Yes, why file a RCE into the special docket.
    At NLIPLA last week, Kappos said appeal backlog is growing at a rate of 1 month each month. (i.e., twice as many appeals are being filed than can be disposed per month).
    Now if post grant opposition is approved under some Senator’s Names Patent Reform and the associated duties given to the same BPAI ALJ’s, what do you think happens to the curve.

  31. Yeah like 6 – I noticed that the backlog also didnt go away the instant Kappos stepped in and said “Quality does not equal rejection“.

    But ya did notice what did happen, didntcha? A return to the historical norms on patent grants…

    HMMMMMM.

    And maybes ya missed the minor detail (since your reading skills be as they are): “Currently the USPTO has received over 11,000 more patents as compared to this time last year” on the other thread.

    So lets see mix your reading skills and your logic skills and yep we get a typical thunder-hoof post of yours.

  32. This goes from scary to hilarious when you consider how many associates at patent firms are gone from any given firm in less than 31 months.

    It is the case at many firms that the guy who files your appeal will not be there when it comes back.

  33. “Note how, even with the increase in allowances the number of the backlog is still rising.”

    The number of rejections is increasing too. It is also at an all time high. Probably due to the fact that filings are at an all time high.

    One other factor is the change in RCE’s from amended to special new. Why file an RCE and wait 3 years for another office action? Just file an appeal.

  34. Note how, even with the increase in allowances the number of the backlog is still rising. We obviously have much less staff on the Board than is needed to handle the influx of cases that probably resulted in large part from KSR Bilski etc.

    Note also that pingerdoodle in his retardation doesn’t seem to care that the numbers are STILL RISING, a good while after Dudas left and the supposed Messiah came. Leading any rational mind to suspect, at least for the most part, the rather large changes in the lawl rather than any leadership of the office.

  35. The scary thing is” that there are still those that deny the Duffas effect of reject-reject-reject.

  36. The scary thing is that the y axis actually does start at zero. A ten-fold increase in three years. Hairy!

    And that’s only ex Parte cases. At the EPO, one of those requires (I would estimate) only about 5% of the resources needed for a single inter Partes case ie an opposition.

  37. I wonder how, or if, the recent change in the USPTO definition of when the Board takes control has affected the throughput.

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