BPAI Backlog: Only Growth

PatentlyO102

As Congress considers adding additional burden to the Board of Patent Appeals, the Board’s backlog of pending cases continues its dramatic rise. The process-flow of the Board appears to be fairly steady-state.  Each month, the Board receives about 1,150 cases and disposes of (decides or remands) about half (575) of those cases. The other half goes to the backlog.

Operating at this rate, it will take 3 1/2 years for the BPAI to dispose of the cases already in its docket. Thus, assuming that the BPAI takes appeals in-turn, an appeal docketed today will not be decided until the year 2015.

A note on the data: The chart is compiled from the BPAI’s own reports that are available online. [Link]  A case is only considered part of the BPAI backlog once it receives an “appeal number.” Appeal numbers are assigned only after briefing is complete.  The large “jump” in the reported backlog in early 2009 is due largely to a clerical change that identified a large number of briefed appeals that had not been given appeal numbers.

Inquiry: Does anyone have a nice memo or chart that they use to help in choosing the best after-final practice? (dcrouch@gmail.com)

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

44 thoughts on “BPAI Backlog: Only Growth

  1. A related problem is a frustrating lack of accountability amongst examiners for insisting on a terrible rejection all the way up to appeal.

    I think there should be two classes of appeal reversals: (1) “Examiner reversed but the rejection was tenable;” and (2) “Examiner reversed and we are embarrassed this rejection even made it up to us.” An examiner should only be allowed #X class (2) reversals and then she’s out (or on probation or something).

    In fairness, I’d be OK with some penalty for an applicant who gets too many reversals in class (4) (“Examiner affirmed and we’re sickened by applicant’s willingness to waste our time”). Then again, there is already a built-in penalty: the waste of the client’s money and the repercussions from that. My clients generally wouldn’t like it if I wasted their money on a frivolous appeal.

    Examiners, on the other hand, seem to have no downside in insisting on silly rejections. That the appeal rate is growing at this rate DESPITE this serious imbalance in incentives suggests the rejections being appealed are generally pretty bad.

  2. Nobody wants to run to Mommy less than I do to resolve a dispute, but when your sister is begging for it…

  3. I emphatically second this motion, with a possible amendment.

    The Board should send all cases whose hearing dates is at least six months into the future back to the examining unit, with a checklist for defects:

    1. On obviousness, did the examiner show ALL elements known in the art (not in the examiner’s dreams)? Did the examiner make the showings required by MPEP 1207.02 in the Examiner’s Answer?

    2. For obviousness, did the examiner make all required showings required under one of the seven MPEP 2143/KSR patterns, or an acceptable substitute?

    3. For Official Notice or inherency, did the examiner give a statement of “technical reasoning” as required? Is Official Notice confined to “peripheral issues,” not direct claim language?

    4. For double patenting, did the examiner make the required showings?

    5. etc. etc.

    Probably 70% of all appeals turn on omissions of this sort.

    If the application fails this checklist, the examiner has a couple options — withdraw the rejections (and send it back to the Board to get a panel signoff so that the applicant gets term adjustment), or write an “optional” office action correcting all this. The option lies with the applicant — either stay in the appeals queue, or withdraw the appeal and reopen prosecution (if there’s a “new ground” relative to the last Action, this again gets a signoff from the Board to protect patent term adjustment.)

    Almost the entire backlog (at least the part I can see) arises from shortcutting at the examiner level. I agree, lets get the backlog down by putting the applications back where they belong, before the examiner for the thought process that the PTO’s own guidance requires.

  4. Actually, the difference between wht the PTO thinks is patentable and what the applicatn thinks is patentable is often very narrow and resolvable.

    The appeal problem arises out of the difference between what many examiners think is patentable, on the one hand, and the PTO and applicant on the other. Examiners don’t read the MPEP, and when they do and disagree, they just say that they’re acting out of a personal notion of “good examination policy.”

    At least at my company, the overwhelming majority of appeals arise out of that unpredictability!

  5. “if the request is written clearly. The Examiner will withdraw finality and write a new Office Action.”

    Uh nooo. If all you are doing is requesting that the finality be withdrawn, all you are getting the same rejection … except that it has been labeled non-final instead of final.

    Also, under the fact situation listed, it is appropriate for the Examiner to go final. The references are already of record and there is no “new grounds of rejection.” In that instance, a final rejection is appropriate. Regardless, whether it is final or not, if it is lousy, it is better to appeal than to play games.

  6. “All they did was promote all of the patent attorneys they had ghost writing opinions to APJ’s.”

    Interesting … now I get to put a name to a lousy decision.

  7. “I’ve seen quite a few new faces at the BPAI, so I suspect that the production should increase.”

    Not really. All they did was promote all of the patent attorneys they had ghost writing opinions to APJ’s. They’ll get small bump in production for the raises they had to pay them, but nowhere near enough to make a dent in the backlog.

  8. why bother continuing to prosecute a bad rejection with an unreasonable examiner

    You wouldn’t be “prosecuting the bad rejection” if the request is written clearly. The Examiner will withdraw finality and write a new Office Action. There are other procedures for requesting that an Examiner re-write the Office Action when a mistake such as the one we are discussing has been made — again, without going to the Board.

  9. “Or you could have done something like this:”

    What does that have to do with anything? Requesting that the finality be withdrawn does not address the underlying problem, which is that the Examiner reopened on a rejection that was previously withdrawn. If the rejection was any good, it should have been maintained.

    Getting an office action designated as “non-final” just gets you another bite at the apple. However, why bother continuing to prosecute a bad rejection with an unreasonable examiner? You keep harping on the wasting of applicant’s money, but going back and forth with an unreasonable examiner is a waste of money. Just appeal it. Delaying appeal just wastes everybody’s time.

  10. This “new” rejection was identical to an earlier rejection he had withdrawn. Had to go back to the Board to set the examiner straight again.

    Or you could have done something like this:

    link to patentablydefined.com

    Or many similar procedures.

    Selfish Applicants are wasting the Board’s time, ruining the system for everybody.

  11. Testing the cow hypothesis. If my mooronic policies hypothesis is correct, and if the PTO has rejected the reject, reject, reject mentality, and if the BPAI output stays constant over the 2005 – 2015 (?) period . . . then, we should soon see that steep climb level out to a slow-rising plateau, the rate of rise being about what it was prior to 2005.

    It would be fairly easy to model such a scenario, plugging in assumptions about times to FOAM, lag times to reach BPAI, etc. But the essential proof of the cow hypothesis will be a plateau as myriad invalid Dufuas rejections work their way through the system. Probably sooner rather than later.

    But I think what I’m saying is that, by analyzing that backlog curve, one could generate a quantitative assessment of rejection quality. Is the rate of new appeals an indicia of the quality of rejections.

    Patent practitioners have — and should have — a low appeal threshold. Flawed rejections are going to get appealed, and so when you see massive increases in appeals, you know the patent community is reacting to systemic PTO problems.

    That sounds like an assertion of fact, but it’s meant to be a corollary to the cow Ho.

  12. You know what might help here? Reasonable examiners. We won a BPAI appeal (actually trounced the examiner) and then had the examiner come back with another rejection. This “new” rejection was identical to an earlier rejection he had withdrawn. Had to go back to the Board to set the examiner straight again. That’s at least one appeal, and in reality two, that never should have happened.

  13. “These questions need answers to properly view any projected backlog levels.”

    The answers are exceedingly easy to find out for yourself:

    link to uspto.gov

    Like most of the USPTO, production varies (greatly) from month to month and quarter to quarter. Unsurprisingly, for any given fiscal quarter, the highest production is always the last month of the quarter (and has held true every quarter since Q1 of FY08).

    Production at the BPAI is pretty much unchanged the last 3 years. 6759 for FY09, 7133 for FY10, and through 10 months of FY11, the pace is for 6871.

    I’ve seen quite a few new faces at the BPAI, so I suspect that the production should increase. However, the production numbers have yet to reflect this.

  14. Addendum to Babble Boy’s point would be a graph of how many cases are resolved each month.

    Is the 575 number fairly steady? Growing? Growing only near raise review time (with drop offs after reviews locked in)?

    These questions need answers to properly view any projected backlog levels. For example, if the 575 is a maxed out effort, then the rate of backlog additions should be expected to be much more than a linear rate.

  15. Dennis: “Each month, the Board receives about 1,150 cases and disposes of (decides or remands) about half (575) of those cases. The other half goes to the backlog.”

    Uh . . . not sure I get this. Are you saying if I file an appeal Aug01.2011, I have a 50% chance of having it decided by Sep01.2011???? I don’t think so.

    My guess is that what you mean is that the number of cases resolved each month is about 1/2 of the number it receives, which is a whole different thing than saying each month it resolves half of the cases it receives.

  16. Had Jon Dufus not been appointed (Jul 2004) the graph would most likely still be below the 5000 mark and rising slowly, reflecting normal growth in annual patent filings.

    The exponential backlog growth reflects the moorinic policies of the Bushies. Reject, reject, reject will be with us for years to come. Probably as long as the debt from the Iraq war.

    Kappos ought to consider offering to re-open all appeals filed between 2005 and 2010. Applicant would be given a free, non-final FOAM — start from scratch. Spread the BPAI backlog among 4000 examiners and probably reduce it by 80% within 18 months.

  17. How is he going to do that without the funds? Right now the PTO isn’t hiring and there is no overtime for examiners. 100 new judges, not even close to likely. A BPAI backlog to 1 year? Even less likely. There have been big goals set with no chance of achieving them. Kappos also wants a 10 month backlog before first actions on cases.

    Tilting at windmills comes to mind.

  18. Well I have Family in Canada, Ireland, and England. Filing there would be the way to go. Maybe they’ll even take me in after I tell them what Policy accomplished, and how they did it to me by filing elsewhere to hide it from me. But I won’t hide it from you like they did.
    I will fight on in this Case. But I will now file elsewhere. And hopefully if I have a winner (s) which I am sure I have, I will put people to work. Instead of allowing Policy to steal from the little Inventors so the big guys can Dump the country into an even deeper hole.
    Watch out though. We are not to far off the mark that London is now dealing with. You want our Cake. Take it! But watch out. People are getting really pi@@ed off. Civil War is knocking at the door. Keep fighting Congress. Keep allowing this to go on. you will see. you will reap what you Sow. Losing your Seat that’s going to be nothing. That you are doing to yourselves. But destroying this Country is what you are doing as a Group.

  19. Dennis–I agree w/6 (gulp!).

    You should keep backlong.

    Just look at what making up “but it makes sense” new words from combinations of other words has done for Sarah Palin’s “career.”

  20. Kappos said that if the AIA is passed, he plans on hiring 100 new BPAI judges, to rev up for the upcoming changes in reexam and post-grant practice, and also expects that they will cut down the BPAI backlog to 1 year.

  21. “And what the hexx, it’s only the client’s money. Attorneys win either way.”

    The attorney wins once the client decides to get a patent. Once that happens, it is up to the attorney to act in the best interest of the client. In most instances, appealing is in the best interest of the client.

    The cost of the appeal process is nominal compared to the increased value of the patent due to potentially broader claims and the potential for a significant amount of PTA.

    What people call “gaming the system” is just people playing the game by the rules that were imposed by the USPTO. As an attorney, if you aren’t using all the rules for your client’s advantage, you aren’t acting in the best interest of your client.

  22. Okay lets break this down. I complain to the BOPR as I am told to do about an appointment in the office of an atty. that was supposed to be confidential. I tell the BOPR what went on… He is punished … And again I get no relief… Correct? I know it had to do with my case but I get a letter telling me to get lost AGAIN?
    And where so the chain of command start in a Case with a State Atty.? But now puff he has run away. And as far as I know he’s not back. Obviously because of this Case. When does it end? When does the Federal Government say Policy is not Law, and it is not supposed to go this way?
    And by the way. I contacted the Trademark division many times. So what do they do? They remove the Commissioner of Trademarks?

  23. Yeah, the longer the delay the better for many applicants. Selden delayed is basic automobile patent for 16 years before it issued, just when the industry had gotten going big time. Regardless of the merits of his patent, the American public were appalled.

    But clever patentee know a good thing when they see it. They like the delay because it effectively extends patent term. So, these same clever patentees and their minions, did everything in their power in the patent reform legislation to add to the delay, by limiting funds to the PTO and by adding a host of new post grant responsibilities. If they were truly concerned about the BPAI backlog, they would have at least deferred the implementation of the post grant procedures until some date in the future and would have provided the PTO with a great deal of additional funding to deal with the backlog. The fact that they did not speak volumes.

  24. Let’s park the application in appeal for 4 years, let the market mature, and get out with 4 more years of patent term. Of course, you have to win, but the odds are really good.

    50/50!!!

    And what the hexx, it’s only the client’s money. Attorneys win either way.

  25. Others and myself have made this comment before, and it is worth making again.

    The size of the growth of the BPAI’s backlog is directly caused by the extent of the difference between what Applicants believe is patentable and what the USPTO thinks is patentable. If both the USPTO and Applicants viewed both prior art, the law, and the claims the same, there would be no appeals. It is only because there is a vast difference of “opinion” that the backlog is so large. The bigger the difference, the more appeals filed.

    Also, to a point made above, the amount of PTA available on a successful appeal makes appealing a no-brainer. Let’s park the application in appeal for 4 years, let the market mature, and get out with 4 more years of patent term. Of course, you have to win, but the odds are really good. I’ve been noticing lots of new names at the BPAI as well — mostly under decisions in which the examiner was reversed.

    The other option, at final, is to file an RCE, narrow your claims, lose doctrine of equivalents, permanently toll type B PTA, and pad the Examiner’s counts. If you want to make examiners happy go that route.

    Getting back to the backlog. Ultimately, the growth of the backlog reflects patent practitioners opinion of the work product of the USPTO.

  26. The large “jump” in the reported backlog in early 2009 is due largely to a clerical change that identified a large number of briefed appeals that had not been given appeal numbers.

    So….

    How many other hidey-hole “clerical errors” are out there with untold how many other items that are hidiing from a true total backlog picture?

  27. Just imagine what the backlog would be if 75% of the cases in which a pre-appeal or an appeal brief is filed were not reopened, but instead were answered by the examiner and docketed to the BPAI.

    A pre-appeal provides a 50% probability that prosecution will be re-opened. It’s cheaper than an RCE, it doesn’t stop your PTA, and you don’t have to wait 2 years for another Office Action.

    Keep appealing.

  28. Feel free to ignore my advice. I’m sure your clients won’t be able to tell the difference anyway.

  29. and is easy picking for a NOA usually helps

    Lulz, yeah, let’s listen to an Office Stooge

  30. D accidentally created a new and very descriptive word to describe the application and appeal backlog?

    Backlong has a good ring to it.

  31. Indeed. A phone call to the Examiner informing the Examiner that the RCE is filed and is easy picking for a NOA usually helps (assumes that you have some credibility and good will with the Examiner).

  32. But then, RCEs offer a similar delay with PTA now.

    This has been discussed already, and is false.

    RCEs stop PTA.

    Further, all an RCE does is get you another invitation on the merry-go-round (and that “go” has no PTA allowance).

    Further yet, given now the even longer “park” that RCEs will land you on examiners’ dockets, the smart bet is that the Appeal Backlog will grow faster and faster.

    Is there an option that does not park one’s application at the PTO?

    Yes, that option is called Trade Secret – but it has its trade-offs.

  33. While accumulating PTA.

    But then, RCEs offer a similar delay with PTA now.

    Applicants are faced with the option of 3.5 years delay on appeal with 3 years of accumulated PTA, or 2 years delay in the RCE queue with 1.5 years of accumulated PTA.

    Is there an option that does not park one’s application at the PTO?

  34. See that incentive to not appeal gets better and better with each passing day and every frivolously filed appeal where the attorney should have simply persuaded the examiner.

    It also seems to provide a fairly inexpensive means for parking one’s application at the PTO for 3.5 years.

  35. “Thus, assuming that the BPAI takes appeals in-turn, an appeal docketed today will not be decided until the year 2015. ”

    See that incentive to not appeal gets better and better with each passing day and every frivolously filed appeal where the attorney should have simply persuaded the examiner.

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