60 thoughts on “PTAB Backlog – Downward Trend…

  1. Just do a search on Linkedin profiles for admin. patent judge and see all of the people that pop up – these appear to be very experienced patent people (i.e., seasoned IP associates with apparently lengthy experience and former partners at major IP law firms even), which is very surprising. Is the experience at the PTO that valuable to make a career change at such a point in someone’s career?

  2. I see the same thing. You can’t have first year associates whose billing rates are $350/hr writing $5,000 apps.

  3. I think the count is 72/year.

    It is a good question why are experienced people taking the positions? A lot of the people taking the positions must have been making $350K plus. So, what is up?

    I see massive downward pressure on price. Droves of out of work scientist getting reg. numbers and working for law firms and partners becoming mini factories of work where rather than going to associates to service their clients they are using out of work scientist to get the work done.

  4. Getting paid $165/yr to write 60 decisions as the lead on a panel and sign off on another 120 decisions as a panel member is pretty easy money. Do that for 5-10 years and then return to private practice where you can wh#re yourself out as an “expert witness” at $750/hr. Sounds like a good deal to me.

  5. What’s up with the current state of the patent law professional job market? Look at the people accepting positions as administrative patent judges – experienced people at big law firms leaving the private sector to go into government (e.g., 5 – 8 years as a senior IP associate or junior partner)? What kind of drop in pay are these people having to accept? A patent judge only makes around $155 – $165k. The PTO experience is not that valuable really – what’s up? Are these people being laid-off from firms and go to government with little choice?

    Could it be that IP is no longer the Willy Wonka golden ticket to immense riches?

  6. You don’t have any friends, do you? Other than all those children you’re hushing up with lollipops that is.

    Sad.

  7. The big reasons are:

    1) the new Appeal rules (that were eventually scuttled) that were to go into effect (forget the date) that were so onerous that caused a whole people to file appeals before that date;
    2) the new RCE/continuations rules (that were eventually scuttled) that only permitted so many bites at the apple made filing an appeal better than filing a RCE;
    3) RRR;
    4) Attorneys getting used to filing appeals because of (1) and (2) learning that they were a good way to combat (3). Like with any “tool,” it takes awhile for someone to get comfortable using it. A lot of attorneys (previously forced to appeal) have now overcome their reluctance to appeal
    5) The changes to how PTA is calculated makes appealing much more advantageous over filing a RCE.

    Before the USPTO started their anti-patent bent under Dudas, most attorneys I knew never filed an appeal or only filed them only once in a great while. Because of the rules that USPTO were trying to promulgate at the time, many attorneys were forced to look at appeal because they weren’t going to have the RCE crutch to rely on. Combine their effectiveness with the ever increasing use of RRR by the USPTO and appealing became much more commonplace.

    It is the law of unintended consequences rearing its head …

  8. this is related to patent law… How?

    It shows that Justice Kagan, at least, has some knowledge of science. You should find that comforting. Of course, knowing the age at which people tend to become infertile is nothing compared to the deep understanding of science required to know what software is.

    Some of the other Justices appear to believe that the Internet predates gay relationships. They believe it wouldn’t be prudent to stop discriminating against gays until we have scientific data showing that stopping discrimination against gay people is as beneficial as the Internet.

  9. LOL

    AAA JJ, you are a (generally) smart guy. Which makes it puzzling (albeit amusing) that you employ a Malcolm rhetorical tool that does not even work for him.

    But please, repeat the same line again to confirm your doofus status.

    Thanks.

  10. With the PTO policy of essentially putting RCE’s at the back of the examination line, my guess is that it will increase the number of appeals filed. Thus the backlog curve will only flatten and not trend downward.

  11. wow – must be that incredible reading comprehension ability of yours kicking in.

    (don’t forget to dodge those chunks of blue sky coming down)

  12. “…insulting those that agree with you on a particular instance…”

    Who am I insulting that agrees with me on a particular instance? You?

    HUMPTY DUMPTY HAS SPOKEN!!!!! EVERYBODY BOW DOWN!!!!!!

  13. And don’t forget to reference Executive Order 12866 in any write-up of what needs to be done about this self-inflicted calamity.

  14. LOL indeed – insulting those that agree with you on a particular instance only reinforces that “THE SKY IS FALLING” syndrome that you share with NWPA.

    btw, love the all caps. really goes to the effect you are aiming for – you do NWPA proud.

  15. “If you believe that RCEs/amending the claims is the better route, good for you (and bad for your clients).”

    IANAE’s clients??!!!!! Lulzapalooza!!!!!!

    Thanks for the laughs Just saying.

  16. “And AAA JJ – you might want to chill on the insults.”

    HUMPTY DUMPTY HAS SPOKEN!!!! EVERYBODY BOW DOWN!!!!!!

    Lulz

  17. Mere manipulation might explain a ‘bump,’ but that would be all, as the bump would have depleted the ‘hidden’ backlog.

    On the other hand, the fact that the backlog not only bumped, but accelerated (i.e. the slope of change was drastically altered) indicates more to the story.

    As to replying to IANAE, keep in mind that he is the ultimate Office Apologist (his moniker stemming from the acronym for “I Am Not An Examiner.”

  18. of appeals due to Dudas and his ridiculousness

    Bingo.

    And AAA JJ – you might want to chill on the insults. The question was obviously to engage others in a discussion. So instead of smarminess, you could have simply joined in.

    Thanks.

  19. I’ve heard about this pervasive appeal-appeal-appeal mentality before, but I never knew it was so harmful to the process

    You need to work on your satire/analogies.

    I’m glad we finally understand that quality does not equal appeal.
    FYI … most appeals do not even make it to the PTAB (and, hence, don’t get affirmed by the PTAB). If you believe that RCEs/amending the claims is the better route, good for you (and bad for your clients).

  20. The “non-compliant appeal brief” issue is a minor part of the issue.

    What was happening is that the time between when the appeals were docketed and when they were noted were incredibly long. Looking back at my records, for appeals noted around 2007, I see the following differences (in months) between when noted and when docketed:
    7, 19, 9, 9.

    By comparision, the difference between time noted and time docketed (in months) in late 2009 period is the following:
    1, 1, 1, 2, 1, 1, 1.

    It was a simple manipulation of the backlog numbers. The “backlog” doesn’t exist until you docket the appeal. If you wait a year to docket an appeal (after it is ready to be docketed), you’ll have a year’s worth of undocketed appeals that don’t show up in the backlog numbers (i.e., the “hidden” backlog).

  21. I remember filing a whole bunch of appeals around late 2007 and early 2008

    I’ve heard about this pervasive appeal-appeal-appeal mentality before, but I never knew it was so harmful to the process.

    I’m glad we finally understand that quality does not equal appeal.

  22. As I remember it there was a massive surge of appeals due to Dudas and his ridiculousness. In fact, I remember filing a whole bunch of appeals around late 2007 and early 2008 because the examiners were taking outrageous positions.

  23. The non-compliant briefs is one part of it, but I don’t think that explains the massive rise in appeals.

    As I remember it there was a

    (I too suffered from the non-compliant brief problem where one of my briefs had 4 non-compliant notices for reasons about as substantive as you stated. I got the one for page and line numbers, by the way.)

  24. Again, Just saying, you need to go beyond the surface answer.

    My comments only were directed to May ’09 — not the underlying reasons for the 10x jump in the appeal backlog from 2005-2010. I know what those reasons are … and they have been posted here before.

  25. “The USPTO merely caught up and now appeals are being docketed very shortly after the Reply Brief having been filed.”

    Correct. The examiner used to be given 2+ months to sit on a reply brief before issuing a one page notice that the reply brief had been received and entered. In addition to taking away the examiners’ ability to issue bogus notices of non-compliance, the filing of a reply brief immediately sent the appeal to the Board’s paralegals for review.

  26. It’s hard to imagine you could be any stoopider, but you keep making incredible strides.

    When the wait for a PTAB decision in an ex parte appeal is reduced to less than about a year and a half, clients are going to be even more willing to appeal because they will get a resolution of the case faster than they would by adding to the exploding RCE backlog.

    What happened in May 2009 was that the PTO took away the ability of examiners to issue notices of non-compliant brief and assigned that task to (then) BPAI paralegals. So examiners could no longer issue endless streams of non-compliant notices and prevent the application from being docketed by the Board. I had one notice of non-compliant brief issued to me because in my arguments I used the term applicant instead of appellant. That was the sole reason for holding the brief non-compliant. Notices of non-compliance were being issued for referring to page and paragraph number in the summary of claimed subject matter rather than to page and line number. Totally ridiculous “reasons” were being cooked up for finding briefs non-compliant. Dave K, to his credit, put a stop to that nonsense. That’s why the surge in docketed appeals.

  27. Again, Just saying, you need to go beyond the surface answer.

    Go one layer down and ask why were all of these appeals (even the ones now being recognized) being filed.

    You have a 300% jump – and not just a “oops we discovered these in a file drawer BUMP,” but a sustained trend after that.

    Maybe one of the academics can investigate this.

  28. Justice Elena Kagan quizzed Charles Cooper, the lawyer defending California’s Proposition 8, which bans same-sex marriage, about his contention that same-sex marriage is inconsistent with “society’s interest in responsible procreation.”

    “Suppose,” she said, “a state said that, because we think that the focus of marriage really should be on procreation, we are not going to give marriage licenses anymore to any couple where both people are over the age of 55.”

    Cooper said that was different because, in the case of old folks, “it is very rare that both parties to the couple are infertile.” The audience broke into laughter at Cooper’s apparent misunderstanding of the birds and the bees.

    “I can just assure you,” Kagan advised the lawyer, “if both the woman and the man are over the age of 55, there are not a lot of children coming out of that marriage.”

    Hahaha oh wow. How embarrassing is it to have the USSC explain the birds and bees to you?

  29. the answer contains three R’s

    There is that …. but the number of appeals greatly increased far before May ’09. What happened between about October ’08 and about June ’09 is that the BPAI actually started docketing all of the appeals that were waiting to be docketed.

  30. I am not sure that “sitting” can explain the tripling of appeals from May ’08 to May ’09. Sure, the spike may have been a I Love Lucy-like conveyor meltdown, but why did the jump happen in the first place?

    (hint: the answer contains three R’s)

  31. What happened in May ’09?

    The USPTO stopped sitting on Appeals. I had some appeals that weren’t docketed for months (sometimes close to a year) after they were noted — i.e., the docketing of these appeals (a mere formality) was being throttled back to make the appeal backlog not look as bad. The USPTO merely caught up and now appeals are being docketed very shortly after the Reply Brief having been filed.

    As for the “downward trend,” the trend line isn’t too steep. After having a recent high of 1105 appeals disposed of in September 2012 (309 more than received and the first time in a very long time the PTAB actually reduced the backlog), over the next five months (Oct. 12-Feb. 13), the PTAB has only reduced the backlog by 25 appeals. In October 2012, the PTAB couldn’t follow up on their prior month’s numbers and added 264 to the backlog. This means that the PTAB (over the last 4 months) has reduced the backlog by 289 appeals. At the last 4 month’s pace, they’ll work the backlog down to zero in 30 years. Woo hoo for the PTAB!!!

  32. What happened in May ’09?

    How much of the crest can be ‘blamed’ on Kappos (given natural lags in the appeals process)?

    And most importantly,

    How does this effect the projected earnings of APPEAL EVERYTHING (TM) disciples?

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