BPAI Backlog and its Hopeful Trajectory

by Dennis Crouch

PatentlyO184

The PTAB continues to show signs of taking control of its ex parte appeals docket.  The backlog of cases has remained fairly steady for the past nine months.  The hope is that the trajectory will fit to a second-order polynomial with the backlog beginning to decrease substantially over the next two years. More than hope, the PTAB continues to hire more judges to work in Washington DC as well as in Detroit, Dallas, and San Jose. As these judges come online, the Board’s potential throughput will continue to increase. Of course hope can only sustain us for so long.

52 thoughts on “BPAI Backlog and its Hopeful Trajectory

  1. With far under 2% of patents ever litigated, registration is something that should be considered.

    The possible implication could be that the 100-2=98% of patents which are not litigated are cr*p. The question is to find out which ones belong to that proportion… (Probable answer: your own patents belong to the 2%, and all the others to the 98%).

    Your suggestion is nothing new. Back in 1873 the British Foreign Office asked its ministers abroad to study the patent systems at their place of assignment. The returned reports were compiled into a highly recommendable book that can be downloaded from Google.

    More than one hundred pages are dedicated to a description of the US patent system. The tone is laudatory, but the ills of patent examination are by no means dissimulated. The laments about quality and delays will surely sound familiar to the modern reader.

    On page 260:

    “In England patents are granted to every applicant without any inquiry into the questions of novelty or usefulness, and the patent is utterly without value until the patentee has, by litigation in the Courts, established the fact that the invention to which it relates is new and useful. Unless an inventor is able to pay Court costs and liberal fees to attorneys and experts, he is much richer without a patent than with one. A poor inventor, under the English system, is entirely at the mercy of capitalists, and must in general assign a controlling interest in his patent to secure the means to establish even a presumption in its favour.”

    I have been unable to ascertain that there is any important public opinion within the United States in favour of the English system of registering patents at the risk of the patentee. A few have advocated the system of registration on the ground that the American Patent Office did not guarantee value to its patents; and some have urged its adoption in consequence of the expense and delay to which the Examiner sometimes subjects the inventor.
    :-)

  2. So how about the pre-1978 UK system, where the PTO examined clarity and novelty but not obviousness? Patents were quick to issue and the prosecution process was economical. Everything that issued had some semblance of validity and what did issue was clear and typically (to use your word) novel.

    In those days, before EPO-PSA, everybody knew that the obviousness question would cost, typically, millions to answer. So best leave it for those patents that are asserted. The presumption of validity was there, but a mere preponderance of evidence would be enough for the court to find the asserted claim obvious.

    How about that? It’s not what I “desire” you understand. It’s just throwing up ideas for the readership here to mull over and debate, just for the fun of it.

  3. MaxDrei,

    If we were to change to a registration only system, I would also advocate that the clear and convincing standard be abolished.

    The clear and convincing standard has its roots in the fact that a Federal Agency with “expertise” has evaluated the claims against the requirements in law. “Registration only” basically does away with those requirements in law at the granted patent level.

    If you desire to reinstate a clear and convincing level (say, after litigation), then you are basically moving the job of examination to a different (and more thorough) venue. While, the “examination-by-litigation” would typically be far more extensive than the existing examination, to create some type of Gold-plated post-litigated patent would be to court (pun intended) the same type of problems we have now – granted much ameliorated.

    The general argument for considering “registration-only” takes this into account (or should) and balances the total cost to society between the existing less-intensive but more widespread examination (in the Office) versus the more-intensive but much more narrowly applied examination (in the courts).

  4. With a registration only system, are duly issued claims presumed valid? If so, why? If not, what consequences follow? German 10-year patents issue 3 months after the application is filed, but the issued claims are presumed valid only under particular circumstances.

  5. We should consider examination as a optional proceedure that must be requested.

    It currently is.

    And the AIA does that one better with providing more power to PUR. The only problem with that (well, not the only, but a major one), is that that runs directly counter to the mission of the patent office.

  6. With far under 2% of patents ever litigated, registration is something that should be considered.

    You can take a minimal fraction of the $ Billion dollars innovation tax that currently goes to the office and build a much better publication system.

  7. Yeah, Jefferson. He advocated registration. That didn’t quite work out because there were no claims. But now we have both claims and reexamination, oppositions, and the like.

    We should consider examination as a optional proceedure that must be requested.

  8. For priority, I would bet that Thomas Jefferson made new year’s resolutions about getting rid of that pile of junk that cluttered his desk…

  9. Interesting. We have a priority contest! Thanks Fly.

    UK had it in the 1949 statute i know. But whether they had it in the predecessor Statute i do not know. So which jurisdiction was first to invent, or which derived from the other, or whether DE and UK thought it up independently, I don’t know. Do we need to look at the respective Aquis (?) to see who was First to Invent, or should we just see which State was first to get on on their Statute Book (“filed” first, so to speak).

  10. Interesting. Where did the British get their inspiration?

    Reichsgesetzblatt, Jahrgang 1943, Teil II, page 150:

    Zweite Verordnung über außerordentliche Maßnahmen im Patent- und Gebrauchsmusterrecht.
    Vom 12. Mai 1943.

    §4 (1) Das Verfahren vor der Prüfungsstelle bis zur Zurückweisung der Anmeldung oder zur Erteilung des Patents ist innerhalb von zwei Jahren nach der Anmeldung durchzuführen.

    ” Second decree concerning extraordinary measures relative to patent and utility model law, dated May 12th, 1943

    Sec. 4, part 1: The procedure before the examining section up to the refusal of the application or the grand of a patent must be accomplished within two years after filing. ”

    The decree didn’t say what could happen if the delay exceeded two years. The German patent office was severely understaffed because of the draft and of the surge of applications.

    The decree also stated that the office could decide on a text for grant different from that submitted by the applicant, and the possibility of appeal was curtailed.

    The German office ran into a huge backlog again in the 1960s (the sun nevertheless rose in the morning despite all those poor little applications lying around), which contributed in the foundation of the EPO.

    Eventually the EPO became too successful and maintains a large backlog. Anyone remembers the Paris criteria? Procedure before EPO must be completed within three years. Ha. Ha. Ha.

    And now we’re talking about gimmickry (e.g. patent highways) as if there was anything new under the sun.

  11. Ned, the Brits already did, in 1949. And they liked it so much they retained it when they wrote their brand new Statute in 1977. Those Applicants that don’t like it can make their patent applications to the EPO instead. Most do exactly that.

  12. And, I should note, that I have really been pushing the envelope so to speak on some new an innovative 112′s and 101′s in the last few years. Still, I can’t get an appeal. :( Applicants just crumple and amend or so forth.

  13. Doesn’t there become a time when due process is sufficiently dilatory that it becomes a due process violation.

  14. LOL – reminiscent of the self-congratulatory Duffas era “Best Quality Ever” mantra (that MM seems intent on reviving by denigrating the Kappos “Quality Does Not Equal Reject” era (and since there was no Reject-Reject-Reject era in MM’s imanginary recreated world, Kappos never actually said his quote as there would be no reason to say such a thing.

  15. LOL – but 6 is not always your examiner and MM is not always the SPE, so my suggestion is correct that the RCE path may be advisable.

    Clearly, a better answer than “always” is to appeal or RCE as the situation dictates.

  16. The changes in law do not correlate at all to the infamous drop. You have been invited in the past to explain this and you quite frankly refused to give answers. Not all that shocking.

    Otherwise, your post here is just more of the typical douchebag ways of yours. (I would not advice you trying to register a trademark on that, as the source is unmistakable.

  17. That is never the best answer when you have 6 as your Examiner, and MM, as the SPE. Appeal the SOBs, and take it all the way to the Supreme Court if need be!

  18. “Even 25k jobs wouldn’t put a dent in the current unemployment rates.”

    Tell that to the 25,000 people that need those jobs. Sheeesh…..
    Spoken like a true tenured professor, government subsidized employee with a guaranteed job that adds nothing to the economy.

  19. When the historical allowance curve (historical at 70%)

    LOL. Yes there is some “natural” level of allowances that is “right” and it must be around 70% or higher, regardless of how many applications are filed and regardless of any other “historical” changes.

    returned from the otherwise unexplainable sudden drop to about 30%

    Oh, so it wasn’t “reject everything” after all. In fact, it wasn’t even close to “everything” that was being rejected. In fact, even during this alleged era where “everything” was rejected, the USPTO was granting a steady stream of obviously invalid bullc–p.

    Are you suggesting that you are getting claims allowed now that you could not have gotten allowed during this alleged “era” where “everything” was rejected? That would seem odd, given that 103 and 101 were both given extra teeth in the meantime (as you’ve been screeching to us here, non-stop). What would be a more appropriate “allowance rate”, anon?

  20. That’s funny. I’m surprised that on September 16 they didn’t just wipe out that section of the website that lists the BPAI’s backlog. “The PTAB’s ex parte appeal backlog is zero!!!!!! Yay!!!!! We’re awesome!!!!!!!”

  21. Don’t get me wrong AAA JJ, it’s a good answer. It’s just not the best answer.

    Some may actually prefer the slow track of an RCE.

  22. As someone who prosecuted through the alleged “reject everything” era (when it was arguably easier to obtain broad claims than it is now), I’m curious: when exactly did that era end?

    alleged…???

    When the historical allowance curve (historical at 70%) returned from the otherwise unexplainable sudden drop to about 30% (you know, the curve that perfectly matche the appropriately time-lagged inverted bloated backlog plots).

    Really MM, this is one of the most objectively verifiable items regarding the era of Reject-Reject-Reject – are you really questioning the existence of that era?

    Better trolling please.

  23. there should be less need for appeals than the backlog from the reject-everything era.

    As someone who prosecuted through the alleged “reject everything” era (when it was arguably easier to obtain broad claims than it is now), I’m curious: when exactly did that era end?

    What is the name for this new era we’ve been in since the end of the previous era? I propose The Krappos Era.

  24. The vaguely bell-shaped curve reminds me of Marion King Hubbert’s “Peak Oil” argument, but appeals are not about digging and emptying holes in the ground.

    I would much rather expect the future trend to reach a plateau (at best) or increase, in respect of Parkinson’s law.

  25. Other dynamics, in possible support of your curve projection?:
    (1) With the allowance rate increasing, and especially as new examiners get signatory authority for allowances out from under SPE’s who won’t, there should be less need for appeals than the backlog from the reject-everything era.
    (2) Better-run large companies are paying more attention to prosecution costs, which includes costly unnecessary appeals or appeals highly unlikely to be successful.
    (3) Many of the new PTAB APJs are coming from outside firms and thus [theoretically anyway] should come up to speed fast at appeal opinion writing? And hopefully perhaps be more sensitive to 112 issues that should have been considered?
    (4) As your other recent statistics showed, the vast majority of appeal issues still involve 103 issues, in spite of the current 101 law mess.

  26. When the claims are allowable but for an examiner hoping for the RCE gravy train to pull into the station, appeal everything is the answer.

  27. link to mercedsunstar.com

    A computerized method for processing these hundreds of thousands of applications for gun-toting security guards at elementary schools, wherein said security guards are paid a wage that is 30% above minimum wage or less. It’s plainly non-obvious when the claim is considered “as a whole”, which is what I will keep repeating over and over until …. PROFIT.

  28. I am sure that AAA JJ has heard of Exelixis by now.

    Note too, that even lost appeals initiated after the three year guarantee date have no lost PTA, so the choice will come down to having some higher authority kick the examiner in the @_$$, or playing the (now even more greatly delaying) RCE merry-go-round game.

    Each path has its pros and cons and both paths (sorry AAA JJ – “appeal everything” is not the best answer) need to be considered as optional tools.

  29. Let’s say that leaves 2500 patents. What percentage of issued patents are never practiced? What percentage are market failures?

    What percentage create difficulties for a competitor, which then goes belly up, after which the patentee goes belly up?

    Anyway, the real money is to be made providing highly trained security guards and snipe shooters to keep our elementary schools safe. Tomorrow I’ll be filing a bunch of patents relating to that (e.g., methods of evaluating potential security snipers, using a computer) and if the USPTO doesn’t grant them all in a first Office Action we know that the terrorists have won.

  30. I heard. When I’m at risk of losing an appeal, maybe I’ll give that a try. Until then I’ll get my clients the claims they deserve with plenty of PTA heaped on top. You might want to try it yourself sometime.

  31. Considering that I’m getting, at a minimum, 1,500 days of PTA out of every appeal I file,

    Haven’t you heard? You can do that with RCEs now, and you don’t even have to risk losing the appeal and your PTA along with it.

  32. Considering that I’m getting, at a minimum, 1,500 days of PTA out of every appeal I file, I’d hardly consider myself even the slightest bit responsible for the delay. Got a notice of allowance a couple of weeks agao from one of my appeals with 2,057 days of PTA. New personal best.

    So you can go f#ck yourself.

    Happy holidays!!!!!!

  33. Which cases are these? Are they marked with a red star on them? How do you decide?

    They’re the ones where AAA JJ is of record for the applicant.

  34. As the economy picks up, not only will more applications be filed but they will be prosecuted more aggressively. I had many clients who abandoned appeals and applications four years ago, not because their appeals and applications did not have merit but because the clients did not have the money to pursue them.

  35. “You can be less charitable and tell the applicants they shouldn’t have appealed in the first place, and the delay is their fault.”

    Which cases are these? Are they marked with a red star on them? How do you decide?

    Do you have clients waiting for funding until their patents are approved?

    Do you have other clients who are waiting to compete but don’t want to risk infringment so are waiting years for the PTO to decide?

  36. Yes, Dennis, but you need to consider that as the backlog starts to look like it will clear up, we are going to start filing more appeals.

  37. holding up businesses and investors and thereby jobs

    Let’s get real here. There are only about 25k cases tied up in appeal right now, a large chunk of which are still within a reasonable delay to be heard. Let’s say 15k of them have been delayed for an “inexcusably long” time.

    Of those 15k, let’s say half will have their rejections affirmed and not issue in their current form regardless of the delay. You can be less charitable and tell the applicants they shouldn’t have appealed in the first place, and the delay is their fault.

    Of the remaining 7.5k, probably 2/3 are held by large multinational corporations, none of which can use a patent grant to create a job because (1) they employ inventors to invent way more than one thing a year, (2) a single product requires way more than one patent, (3) they don’t wait for patent grants to market their products, (4) a new product doesn’t necessarily create a “new” job because they already have people for that, and (5) they probably have a continuation issued already. Also, (6) half of those jobs wouldn’t even be in the US.

    Let’s say that leaves 2500 patents. What percentage of issued patents are never practiced? What percentage are market failures?

    Even 25k jobs wouldn’t put a dent in the current unemployment rates. Patents are not the make-or-break factor in the economy. All the backlog is doing is holding up the fees of 25,000 patent agents, but even they are busy doing other billable work in the meantime.

  38. When you take the data points and extrapolate, I do not think that you get the “hopeful curve”

    The inexcusably long delays at the Board are holding up businesses and investors and thereby jobs

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