PTAB Backlog: Over the Hump!

By Dennis Crouch

The new Patent Trial and Appeal Board has cause to celebrate!

In 2008, the Board’s backlog of pending ex parte appeals began to rise at an alarming rate. Being a government body, the alarms did not really begin to sound until 2010 and the fire trucks only recently arrived. Since 2008, the number of pending cases has risen almost ten-fold to its current height of more than 26,000 pending appeals. During this period, the backlog rose each and every month without a single decrease.

Now, for the first time in more than four years, the monthly backlog figure has dropped. The Board’s numbers for September 2012 show that the body disposed of 311 more cases than it received for the month. The chart below shows the PTAB/BPAI backlog over the past several years. The last data point on the right hand side of the chart shows this happy decrease. Congratulations!

This transformation is due to the large number of new administrative judges at the PTAB. Although there may be a few bobbles, I expect that the backlog will begin a serious and steady decline by January 2013.

49 thoughts on “PTAB Backlog: Over the Hump!

  1. From my experience this “blistering” pace was caused by unreasonable rejections. And, the sense that either you appeal the examiner, or the patent application is fairly worthless.

    But, that was back in 2008 range, since then the examiners have become far more reasonable, which doesn’t mean easy. link to carlmontpharmacy.com

  2. Even if we had more time, scouring whole subclasses just because they’re there doesn’t guarantee we’ll find better art than with a conscientious text-limited search (the “work smarter, not harder” slogan we keep hearing). I find pure classification searching to be a waste of time in most cases. Reasons: a) many subclasses are bloated, b) many issued patents and published applications are placed in questionable or simply wrong subclasses (especially true of PGPubs, which are classified by contractors and not examiners anymore), c) the technology areas I work with have more or less standard terminology which is amenable to text searching. Generally the only time I go through a whole subclass is if I need to find a very specific shape or spatial arrangement of parts which is unlikely to have a standard or common description. On the other hand I agree with the criticism of strict keyword searching in the sense of mining the claims for keywords, looking for a reference that happens to have all (or most) of them, and forcing that reference to fit the claims. Normally I try to pay more attention to the actual problem being solved and plan my search accordingly, because I know that applicants will be more likely to make a meaningful amendment if the art is conceptually close. Applying a toaster reference which beats the claims only literally, in an application that has nothing to do with toasters, is at best going to yield claims which exclude toasters.

    Based on my early experiences with CPC, I doubt that it will help much. Sure it breaks down the IPC into finer resolution but some of the subclass indentations are extreme (e.g. 7 digits after the XnnXn/ symbol) so we may end up having to include a broader range of subclasses anyway (such as start with the closest XnnXn/ 5 digit subclass, then include all the 6-7 digit subclasses indented under it). The existing US references have already been given CPC classifications by the Europeans, and I’ve already noticed a few US patents which are classified in only a single 7 digit subclass, so those will be hard to find via subclass searching unless you are lucky or just happen to think like the EPO examiner who classified that particular patent. I’ve also found that some subclasses in the CPC schedule have no US references, and conversely some US references have a CPC classification that is not even in the CPC schedule. Even under the USPC we are caught between hoping that the allowing examiner puts an application in the “right” spot (which can be quite subjective), and hoping that the searching examiner knows where to look for the issued patent. CPC could easily amplify both of those factors. So, I don’t see us shifting away from text searching any time soon.

  3. anon, you have it backwards, once again.  If there is anything consistent about your posts is that you see the world as if you were looking at it from a mirror.

  4. Keyword searching produces mainly garbage and the occasional gem. Classification searching is still far more reliable. If you haven’t done both you haven’t done a good job. Period.

    Of course, 99% of Examiners only do keyword searches, but that is the source of the low grade rejections we get, which are the real reason why compact prosecution doesn’t work atall.

    The Examiners will plead lack of time, poor souls. And they may even be right about that.

    If you aren’t an Examiner, what’s your excuse?

  5. From my experience this “blistering” pace was caused by unreasonable rejections. And, the sense that either you appeal the examiner, or the patent application is fairly worthless.

    But, that was back in 2008 range, since then the examiners have become far more reasonable, which doesn’t mean easy.

  6. Dudas must have had a good reason for his actions.

    Not only is this assuming facts not in evidence, the assumption itself would lend credence to the very failure that we see in the mountains of backlogs.

    Quite simply, Ned your statement is not defensible.

    As to the “ultimatum” accept this or else, that too is rejected as preposterous on its face. You present a false choice of accept Reject-Reject-Reject or accept ludicrous patents. Personally, I choose a third option: do the job right (no one said this correct option would be easy).

  7. Of course not. I wouldn’t search for it that way. By the way, there wouldn’t be a class for telephones either. One would search for, for example: electric voice distance wire…

  8. Because it offers weak protection to some aspects of that vision. Governments have a fatal flaw. Unlike the private tyrannies, the institutions of state power and authority, offer to the despised public an opportunity to play some role, however limited, in managing their own affairs. That defect is intolerable to the masters, who now feel with some justification that changes in the international, economic, and political order offer the prospects of creating utopia for the masters with dismal prospects for most of the rest. It should be unnecessary to spell out here what I mean. The effects are all too obvious, even in the rich societies, from the corridors of power, to the streets, country side and prisons. For reasons that mirrored attention that lie beyond the scope of these remarks, the rollback campaign is currently spearheaded by dominant sectors of society in which the values under attack have been realized in some of their most advanced forms. The English speaking world, no small irony, but no common contradiction either.

  9. “Quality does not equal reject.”

    Could it be that Dudas lost all faith in the examining corps (why?) and wanted every application be reviewed by BPAI until they got “educated?”

    Dudas must have had a good reason for his actions. Moreover, I hear them all the time in complaints by the likes of Google and Microsoft that the PTO is or at least was not doing job 1.

    Even a small sampling of the claims issued in the last few years given us by MM and David Stein point to a systematic problem in the PTO that continues to exist and that has not been solved.

    If you do not agree with this, all I can say is that you seem to endorse the patent system as the sad joke that it has become because of such patents.

    But, that asside, I will still agree that a large part of the problem still lies with the Federal Circuit who still do not get it when it comes to the requirements of 112, p.2.

  10. Off topic,
    I will send everything I need to show that the case was amended by someone else. Why would I amend a case and add a name that was already on another case? I wouldn’t. And why else would I get my money back. They knew it wasn’t me that did it, that’s why. I have sent proof of the Typing differences and still I was told to get lost. But on another note I did send 5 more pages, I figured they weren’t going to contact the USPTO for them. They don’t even want to do the right thing!And on even another note I mailed two pkgs last week. the Post office says they don’t exist… But they do? Do you think they were stopped because the Doggie knows now? But anyway I’ll show her the receipts after I copy them.
    And on one more note. Personally I think the Cardboard bike.. unless it is real cheap will do about as well as the Pet Rock!

  11. And the long backlog strengthens the examiner’s hand, as he realizes that unless you have the patience to wait years before the Board, you may have to file unnecessary appeals or make unnecessary amendments to get your patent issued in a commercially practical amount of time — it is screwing over the small business, in particular

  12. yes, that is a serious problem especially with products with short commercial lives and those that can be designed around after a few years. PTO, take note!

  13. I wish that were merely an example that I made up, unfortunately I have an examiner doing exactly that in one of my cases. He’s clearly fishing for an RCE. He’s not getting one.

    Don’t file RCE’s. Appeal everything.

  14. It doesn’t take a long time to merely affirm the Examiner– Despite all the statistics on the wait time to get a decision, this one came in fairly rapidly– our brief filed Feb 2011. Ah well, onwards and upwards!

  15. Wait? Are you saying it will be seven years to get the appeal I just filed with the PTAB heard?

    At that length of time the technology of the patent will be obsolete, not to mention the competition is gonna figure it out on their own in year or two.

    Is there anyway to stop the appeal and try and compromise and/or argue with the Examiner to issue the patent?

  16. I know several ex-BIGLAW and big patent boutique partners who now work as APJ’s and others who are trying to get in. As you and others have noted, the patent gig is nowhere near as good as it used to be. Too many reg numbers chasing too few prosecution dollars and clients, with substantial back-office costs. In fact, I know that the PTO has had quite a bit of luck recruiting seasoned patent lawyers to become patent examiners even though it starts them out at the GS-11 level, which is far below what a first year associate at a big firm commands. Outside of a few specialties, times are tough out there for most of us, and that is not going to change anytime soon.

  17. Not supposed to, but in a world dominated by text searching, that would seem to be a logical consequence.

    News flash: this is a tried and true approach to obtaining patents. Also occasionally effective is “using twenty words when one word will suffice”.

    Welcome to the field of semantic engineering.

  18. The prize would go not to the technically creative but to the semantically creative.

    Or to whom I call semanocreativontologists.

  19. No,

    But you increase your chances that the thoughtless key-word searching examiner will not find pertinent art.

  20. Not supposed to, but in a world dominated by text searching, that would seem to be a logical consequence. The prize would go not to the technically creative but to the semantically creative. 

  21. Amen. over the past six years, I’ve seen average apps go from about 8k mechanical to about 6k while computer and controller stuff has gone from 10k to 7k or 8k. Meanwhile, PTO fees are up, cost of living is up…. making a living as a working prosecutor is a bareknuckle sport these days. If you have a connection to keep 10 prosecutors busy at 5k an app, sure, you can do well. But those connections are few and far between.

  22. Good job everybody what with all the patents and examining and stuff!

    (^_^)

    Here, have a cookie!

    *<(‘_’<)

  23. Additionally, in the mechanical arts especially (not so much in the chemical arts) many words can be used to describe the same thing, e.g., a beam, an elongate member, an arm, a leg, a rigid connector, etc.

    And in the Business Method/Internet arts practitioners often use broad terms, not easy or impossible to word search.

    Accurate detailed classification system would help everyone — examiners as well as private searchers — and the patent system as a whole

  24. If you used the keyword “telephone”, you would never have turned up Bell’s original telephone patent. If an invention is truly novel, the word for it cannot exist yet.

  25. Fish,

    There is an easy answer.

    Adjust for the time delay and take the allowance rate chart (the one with the “inexplicable” drop in allowance from the traditional 70% or so down to 30% – inexplicable in quotes because this was the heyday of the Dudas Just Say No era) and flip that chart upside down.

    Do the same for a chart on RCE backlog as well as new application backlog.

    Then remember what was at stake in the office power-grab of their Continuation Rules debacle (and why 6 considers Dave Boundy to be his Nemesis).

    Then remember one of the first and greatest Kappos quotes: Quality does not equal Reject.

  26. “Since 2008, the number of pending cases has risen almost ten-fold to its current height of more than 26,000 pending appeals.” Why? Or at least why at such a blistering pace?

  27. Makes sense, Paul. We is being cost squeezed. (And it would be nice to have someone help pay my health insurance.)

  28. The PTAB’s numbers for September were its highest in recent memory. However, this is not surprising since September is the end of the fical year at the USPTO and there are always a lot of people scrambling to “make their numbers” for the year.

    Also, the September number for appeals was the LOWEST number since February of 2010. I can only assume that this was a statistical anomoly and not a trend (e.g., the number of docketed appeals dropped 25% as compared to the last month).

    I suspect that it may be a few months before we can officially say that the PTAB is completely “over the hump.”

  29. There is no question that turning the corner was important. But the historical perspective is not as simple as Dennis’ chart conveys.

    Don’t forget that the statistics were heavily influenced by how one counted whether there was an appeal pending. Dudas changed the accounting so that an appeal wasn’t docketed to the BPAI until a bunch of hurdles were surmounted, and then the hurdling got harder. Under Kappos the accounting became automatic and this drove up the numbers.

    Is anyone else enjoying the color that Dennis has been including in his posts lately (e.g., today’s fire trucks).

  30. Maybe, but I hear that several of them became new APJ’s after finding that the grass was not that green, and much less secure, in private practice these days. Sure, sucessfull litigators [i.e., those with clients] can make a fortune from all the patent litigation these days. But much of the rest of the patent bar is getting increasingly cost-squeezed by clients trying to pay less and less for prep and prosecution, and opinion work is increasingly dangerous.

  31. Wow…talk about below the belt. While I agree most office actions are the result of mindless combining of documents containing words similar to the words used in a claim with very little consideration given to context, I did not mean to suggest that doing a keyword search is the end of the process.

    Of course one must then look for relevant documents from among the results and even look at the cited and citing documents associated with the most relevant results to, for example, find other words or phrases used to express similar ideas….

    Limiting your search to a particular class or set of classes puts the guys that brought you the crappy office action back in the drivers seat, don’t it? Ain’t they the ones that assign the classes?

  32. When those APJ’s that were hired thinking they were going to be doing “trial” work find out they’ll be sent over to the “appeal ghetto” and be reviewing the typical cr#p rejections issued by the examining corps, they’ll polish up their resumes and fly the coop. Backlog back up again.

  33. If you looks at the new CPC it isn’t even close to a solution. They had neglected the US system for years and years in anticipation of the CPC, and all they did was move the completely bloated US subclasses for anything computer related over and changed the numbers to the CPC class numbering.

    So far, very unimpressed.

  34. If, as I suspect, the PTO has overestimated the number of expensive new AIA post-grant inter partes proceedings trials that will be requested in the next few years, then some of the new APJ’s hired in anticipation of that Board trial work can instead help reduce the backlog of ex parte appeals. Also, interferences should start to taper off in just a few more years, freeing up a few more APJ’s.

  35. Of course, once word gets out that the backlog is decreasing, applicants will choose to appeal, rather than waste time feeding the habits of RCE addicts jonesing for their next fix. And the backlog will start to increase again.

  36. Woohoo – at the rate of reducing the backlog of appeals by ~300 a month, we will break even and eliminate today’s backlog in only seven years.

  37. “I just search all patents by keyword.”

    That’s how examiners search. That’s why you have examiners combining patents for welding aircraft engine blades with patents for ion implantation of semiconductor wafers.

  38. I keyword search to find the most relevant reference, and then look through that class. It gets better results quicker.

  39. That was below the belt! Only examiners do that… the rest of us are looking forward to the disaster that will be the implementation of the CPC by the US examiners who never learned the IPC or ECLA, and sure aren’t getting much other time to learn the new system. Looking forward to years and years of art being poorly classified in the US.

  40. The CPC (cooperative patent classification between EPO and USPTO) is supposed to go into effect very soon, if it hasn’t already.

  41. Finally, another one of our country’s problems which is being addressed, albeit slowly.

    How about the PTO classification modernization?

  42. Can’t wait until I can get a reversal in less time than it takes for the examiner to pull up the previous OA, insert the “not persuasive” form paragraph, and turn in for counting. Then we’ll be cooking with gas.

Comments are closed.