Appealing to the PTAB: Expecting Delay

By Dennis Crouch

The PTAB continues to work on its 26,000+ backlog of ex parte appeals pending at the USPTO. The Board has reduced the backlog in seven of the past twelve months. However at the present rate, the backlog will not drop below 5,000 for more than twenty years. As the chart shows below, the large backlog of appeals cases is a historically new phenomenon.

The bread-and-butter of PTAB decisions involve questions of obviousness under 35 U.S.C. §103. In May 2013, for instance, about 94% of the ex parte PTAB decisions involved obviousness rejections. About 7% involved statutory-subject-matter (most of those also included obviousness rejections). As the PTO makes its push on claim-clarity, we can expect a growing number of appeals related to indefiniteness rejections.

59 thoughts on “Appealing to the PTAB: Expecting Delay

  1. can somehow be blamed on Dudas and his alleged “anti-patent” policies. That’s clearly not the case.

    LOL – WRONG.

    Invert the allowance curve, noting the drop from the traditional 70% or so down to the 30% or so. Overlay that graph on the skyrocketing backlog charts (choose whatever deckchair you want to sit in). Note too the anti-patent moves by the Office stopped by the likes of Taffas, Katznelson and Boundy.

    “clearly” what Malcolm means is that he is attempting to spin and – what was that word – dissemble – the clear past into something different.

    Malcolm, how do you stand to be SO wrong, SO often?

  2. ? Who cares if they ‘get close to zero’

    The world is not a perfect place and never will be.

    Reminds me of a certain Jane Fonda-ism.

  3. the RATE of cases actually going down – have fun trying to spin THAT fac

    That’s great news. Please let us know when the rate of j-nk patents asserted by patent trolls and skummy NPEs gets close to zero cases annually.

  4. Kappos didn’t impact the rate of appeals very much at all

    I agree with this, PTAB. What’s odd, then, is the insistence by some that the dramatic rise in appeals (and the resulting backlog) can somehow be blamed on Dudas and his alleged “anti-patent” policies. That’s clearly not the case.

    As Dennis notes, this backlog isn’t going away anytime soon absent some dramatic changes in PTO staffing, rules or applicant behavior. And of those three possibilities, the latter is the least amenable to being changed without changes in the other two.

  5. Nice QQ – here’s a tissue.

    (and by the way, you should see the comment about the RATE of cases actually going down – have fun trying to spin THAT fact)

  6. As such, Kappos didn’t impact the rate of appeals very much at all

    Unless of course, you consider the crest of the wave…

    Wait, didn’t someone already point that out too?

  7. This is a slamdunk invalidity argument — those don’t exist in every case.

    No, but they exist in plenty of cases asserted by patent trolls, particularly with respect to the broadest claims asserted in those cases. It’s easy for a judge, especially with the help of a lawyer, to make it seem like an invalidity argument was not a “slam dunk”, especially when the claim is written so poorly that it takes tens of thousands of dollars of lawyer time to “conclude” that it is, in fact, incredibly broad and indistinguishable from the prior art.

  8. Nice misrepresentation INANE.

    The reason why I say it is because Malcolm has been so two-faced about having the nuts to admit when someone is wrong (as he clearly has been). The world needs not say the phrase as the world recognizes the phrase is true.

    It is only when you go about exposing falsehoods that you would be inclined to affirm the truth.

    LOL – or do you think Malcolm is correct? Come INANE, dazzle everyone with your legal brilliance.

  9. Careful there NPEs a g, with such facts, Malcolm may hurt himself trying to twist them to fit his agendas.

  10. LOL – Let’s hear that phrase Malcolm

    At least there’s one thing Myriad hasn’t changed – you’re still the only one in the world saying that phrase.

  11. We’re still looking at roughly 1,000+/month, which is about 4-5 times higher than the rate circa 2006 and isn’t explained by any “delay in docketing.”
    Why are you ignoring that the rate in August of 2009 HAD ALREADY increased from “circa 2006″? That dramatic increase in the number of appeals had already occurred.

    Moreover, any appeals responsive to the actions of Kappos wouldn’t have been baked into the numbers for another year. As such, Kappos didn’t impact the rate of appeals very much at all — they were already high by the time he took office.

  12. Prediction: none of this will have any effect on the number of j-nk patent lawsuits brought next year, although it might affect how many of them are filed in Judge Messite’s district (no, he’s not in Texas).

    Hardly. The case was considered exceptional because “Interaction Laboratories, Inc. — the original ’226 patent holder — developed a product known as the Kilowatt that embodied the invention of the ’226 patent. It was sharply apparent that the Kilowatt had been publicly demonstrated at trade shows, disclosed in numerous publications, and offered for sale more than one year prior to the filing of the patent application.”

    This is a slamdunk invalidity argument — those don’t exist in every case.

  13. LOL – you don’t have time to read anyone’s posts as you are too busy building bonfires for your little pet theories.

    But nice classy response Malcolm. You need to get into a line of work you can beleive in (and at least have a shot at getting the legal positions correct).

  14. But is explained in part by the deck chair movements of the changes in RCE process (and the easing of the Appeals process by scrapping onerous rules and making it easier to file).

    Oh wait – I already said that too.

    LOL – Let’s hear that phrase Malcolm: anon was right.

  15. The shrink is busy with Keeping It Real (one of my favorites), Robert, Francis, Shrivan, Vivika M. and who knows haw many other splinters of your tortured soul that keep surfacing, all the while you QQ about the ‘plague’ of svckpuppets here at the O.

    The word (still) for you: hypocrite

    C’est La Vie

  16. You never answered my question about Rader

    Hey, Tr0llboy, guess what? I don’t have time to read all your horses*t. Go eff yourself.

  17. From August 2009 (Kappos taking over) to August 2010, the backlog grew about 5000 to 17,482.

    Right. And from August 2011 to August 2012 it grew at least another 5,000. We’re still looking at roughly 1,000+/month, which is about 4-5 times higher than the rate circa 2006 and isn’t explained by any “delay in docketing”.

  18. What happened? The USPTO stopped playing games after Dudas left, and they cleared out most of the backlog of undocketed appeals.

    Wow – sounds familiar – sort of like what I posted at 5:49 AM.

    C’mon Malcolm, this phrase should be rolling off of your tongue with great alacrity:

    anon was right

  19. I noticed that your persona has fractured again at the PatentDocs.

    I’m not sure who you think you’re stalking, Tr0llboy, but you really do need to see a shrink.

  20. That doesn’t even make sense.

    Right. Does it make sense to use mailroom staff to screen registered letters to an attorney and throw out the letters that the mailroom staff believes contains prior art that is relevant to an application being prosecuted by said attorney?

    No, it doesn’t. But you suggested that awesome idea, Tr0llboy. Did you ever find anyone else on earth who thinks that your idea “makes sense”?

    I don’t think so, Tr0llboy. G0d, you’re a d8pshet.

  21. It appears that the instant Kappos starte to “address” the backlog of appeals, Applicants who were prone to filing appeals simply turned it up to 11.

    This has been addressed many times before. Dudas was playing games with the stats. The numbers listed above are numbers of docketed appeals. As you may (or may not know). When a Reply Brief is filed, it is first “Noted” by the Examiner, and then the Appeal goes to the BPAI (at the time) for docketing. Anyway, at the time Dudas left, the time between filing the Reply Brief and the actual appeal being docketed could be as a high as 12 months. What this meant was there was a vast stockpile of undocketed appeals that were ready to be docketed. Today, appeals get docketed within a month or so after the Reply Brief is filed.

    Dudas left January of 2009. At that time, the backlog was 6,649. Kappos was sworn in August of 2009. By that time, the backlog had already swelled to 12,391. What happened? The USPTO stopped playing games after Dudas left, and they cleared out most of the backlog of undocketed appeals.

    From August 2009 (Kappos taking over) to August 2010, the backlog grew about 5000 to 17,482. Another thing to consider is that it takes about a year from a Final Office Action to a docketed Appeal Brief. This means that most of the appeals in Kappos’ first year were already in process by the time he got sworn in.

  22. The applicant….?

    You really should see the doctor about all those Calvinball face sp1kes you have taken INANE.

  23. You know, sort of like the super-secret-second-set-of-eyes-that-only-looked-at-allowances-but-not-rejections (or in your world, did that ALSO not happen?)

    In your world, did the applicant not always have the right to request a second pair of eyes for any second or subsequent rejection?

    Just trying to narrow down what world that might be.

  24. Don’t know why posts are disappearing – the appeal route and the RCE route are both viable and can (and should be) used under different conditions.

    But the FACT remains – BOTH paths are used when the examination has been CRP.

    Good examination that finds and explains why a patent cannot be achieved are actually fine things. With such, I can approach my client and provide objective advice to abandon. But when the examiners’ work is CRP, I have a DUTY to advise my client.

    Your (attempted) jab at better patent attorneys makes no sense at all.

  25. LOL – and you also forgot that certain people (like me) have already indicated that the deck chairs were being rearranged. One of Kappos’ moves was to stop the RCE gravy train (or is that another thing in your world that ‘never happened?’).

    Yet another thing that if you ever found the nuts, you could say “anon was right.”

    You, find the nuts, – yeah like that would ever happen.

  26. You never answered my question about Rader, Malcolm.

    And even here, you somehow find a way to QQ.

    Good thing, though, your next truckload of Kleenex just arrived.

  27. Or maybe the ‘hidden’ piles of applications were simply cleared out of the Dudas closets and staches.

    You know, sort of like the super-secret-second-set-of-eyes-that-only-looked-at-allowances-but-not-rejections (or in your world, did that ALSO not happen?)

    Feel free to join this world anytime (and yes, in this world, you get to say “anon was right about Myriad and Malcolm was wrong

    LOL

  28. That doesn’t even make sense.

    Myriad still got you down, Malcolm? I noticed that your persona has fractured again at the PatentDocs.

    LOL – Life is good.

  29. Thanks, Eliza.

    It appears that the instant Kappos starte to “address” the backlog of appeals, Applicants who were prone to filing appeals simply turned it up to 11.

  30. By and large, when a CRP rejection is received, I have the ethical duty to inform my client that the rejection is indeed CRP and can be overcome in a number of ways.

    Why don’t you let your mailroom staff handle that?

  31. Note that this only includes appeals forwarded to the board, the full turnover rate including reopening or allowance after the appeal conference would be different. But only those forwarded to the board are included in the backlog so these are still pretty good stats to look at.

  32. Interesting Question. I looked up the stats on the pto website (link to uspto.gov) and it appears the rate of appeals reaching the board is going down, but not by much. As you can see, the rate of appeal suddenly jumped dramatically in 2009, and has stayed relatively steady since then.

    Average monthly appeals received by the board, by FY
    FY 2006 – 279
    FY 2007 – 386
    FY 2008 – 532
    FY 2009 – 1279
    FY 2010 – 1032
    FY 2011 – 1125
    FY 2012 – 1036
    FY 2013 – 917 (so far)

  33. Fun stuff here. Talking past each other. Much like prosecution.

    If there are serial “CRP” rejections why are you filing RCEs? Appeal.
    - Or maybe the rejections are not as CRP as you assert they are.

    Bottom line we need better patent attorneys. Period. – Oh wait blanket statements do little to solve anything.

  34. Time to move on.

    LOL – sorry, but serial CRP rejections (which does not take much to do to place the situation into the multiple RCE land) is STILL no excuse for ‘moving on.’

    The post remains true: If an examination is CRP, I explain this to my client with options to proceed and more often than not the client decides to fight the CRP rejection.

    Bottom line: better examination is what is needed. Period.

  35. “And you ASSume that I don’t want a patent if I ask for an RCE? What planet are you from?”

    I made no ASSumption. I did provide examples of reasons why blaming examiners for all prosecution problems is disingenuous.

    In most situations, after multiple RCEs (i.e. 2+) the issues and art have been fleshed out. Time to move on.

    Yes, if you get a bad OA call it out. Start with next action cannot be final for reasons X, Y, and Z. Sometimes mistakes are made. However, blanket assertions that examiners are bad/lazy/etc. does little to improve anything.

    I have seen attorneys attempting to be examiners (EU oppositions), they are rarely good at it. I read all kinds of comments that examiner should have found art for that super obvious claim – well step up to the plate. Instead of simply saying that any decent examiner would have found art, post some art with your presently unsubstantiated opinion.

  36. Aside from the snark, you will always have a Few that will continue fighting for what they think deserves to be a patent.

    Those are the small exceptions.

    By and large, when a CRP rejection is received, I have the ethical duty to inform my client that the rejection is indeed CRP and can be overcome in a number of ways.

    And you ASSume that I don’t want a patent if I ask for an RCE? What planet are you from?

  37. “The problem was, is, and continues to be poor examination that attorneys must take to their clients and explain that the examiner has NOT made a case yet for legitimately not granting a patent”

    Its all the examiner’s fault. It has nothing to do with the following:
    - horribly written claims and specifications (that present attorney always blames on past attorney for writing);
    - at least 20% of amendments being non-compliant and/or having dependent claims depending from cancelled claims (poor attention to detail; if you don’t care I don’t care);
    - Applicants aiming for patent by examination (instead of patent for invention); OR
    - nothing patentable (Gasp).

    I don’t want to examine a case after 2+ RCEs. Appeal or go away. Once I am done with the answer, I am done with the case for a couple years. In fact, I want an examiner initiated appeal. If you aren’t amending and I am using the same art why do you keep filing RCEs? Get out of the way for someone interested in getting a patent.

    Here is another secret that escapes the “bad examiner” just rejects reasoning. It is easier to allow than keep rejecting. “Bad examiner” just allows. “Bad examiner” has little motive to dig up more art and reject. “Bad examiner” gets more counts more easily for allowing.

  38. Still,

    Ned you ignore (yet again) the timing factor.

    Jebus Ned, do you need someone to draw you a map?

  39. LOL

    As much as I look for a substantive answer here Malcolm, all I see is your banal past exploits of cherry picking what you consider to be a ‘bad examples.’

    Thanks but no thanks to your effeminate QQ fest.

    I would much rather see you take some (any) meaningful action in your ‘Crusade’ and start to use the post-grant procedures.

    My bet is that for all of your massive amount of QQ, that you have NEVER used those procedures.

    Le me know know if you really want to do something more than just your usual mewling.

  40. Wherein a patent troll gets smacked alongside the head with sanctions and the Federal Circuit approves per curium:

    link to ipwatchdog.com

    At trial it was determined by United States District Judge Peter J. Messitte that Nintendo did not infringe IA Labs’ patent (U.S. Patent No. 7,121,982). Further, Judge Messitte ordered IA Labs to pay Nintendo more than $236,000 in attorneys’ fees because it was an exceptional case due to the fact that the claims were objectively baseless…

    [T]he Per Curiam decision of the panel, which was made up of Circuit Judges Newman, O’Malley and Wallach, merely read: “AFFIRMED.

    Prediction: none of this will have any effect on the number of j-nk patent lawsuits brought next year, although it might affect how many of them are filed in Judge Messite’s district (no, he’s not in Texas). $236,000 isn’t a whole lotta money to Daddy Trollbucks. That’s just a couple blue chips at the Great Patent Casino.

  41. Still, The backlog begins to climb in 2009.  We really should focus on what Kappos did or did not do.   Simply saying that the Dudas regime of reject, reject, reject does not explain anything because the problem did not appear until after he had left.

     
     
     

  42. have you explain the drop from a relatively steady state historical grant rate of 70% to a low near 30%

    Sure. Someone put the brakes on the nonsense at a time when the application rate was exploding and j-nk was flowing out the door at levels that were previously unheard of (but now seem quaint).

    “Quality does not equal Reject”

    Quality absolutely does equal reject when the invention is ineligible or invalid j-nk. That’s one of the reasons that Kappos was a miserable failure at the PTO. It’s no surprise that statements like that ring your bell, though, and that of your fellow “patent apologists.” The statement was intended for you.

    Now Kappos is sitting in his skysraper law office raking it in, fine dining with his clients and assorted bootlickers, and promoting the awesomeness of even more j-nky “design patents.” Like nobody saw that coming.

    So there are your answers, Tr0llboy. Of course you’ll continue to pretend that none of this was ever taught to you before (because you’re a s0ci0path and a l i a r). And of course you’ll refuse to answer this question:

    Shall we pick some random cases from the backlog and see if [poor examination is responsible for the appeals],

    That’s just a simple yes or no question, Tr0llboy. Let me know if you’re up for it. I’ll try to look at one a day for a week if you pull the trigger. Go ahead. Reach up.

  43. I’m curious as to whether” you are ever going to find the nuts to admit to the simple fact that I was right in the Myriad case and that you were wrong Malcolm.

  44. APPEAL EVERYTHING (TM)

    (lol – just had to throw that in there for your twin’s benefit NWPA)

  45. Shall we have you actually answer any of my prior points on this, Malcolm?

    Like have you explain the drop from a relatively steady state historical grant rate of 70% to a low near 30% combined withthe illegal (re: Taffas) Office moves?

    Or do you still maintain (in your own echo-producing mind) that there was NO reason for Kappos to come in and state: “Quality does not equal Reject

    You seem to forget that actual history works against you here Malcolm.

  46. He tried Ned – or don’t you remember the moving of the deck chairs (and dealing with the union) on RCE’s as opposed to applications awaiting first action, and the dropping of onerous Appeals rules a(and in fact simplifying Appeals rules). Quite in fact – the cusp that you see is somethign that probably CAN be attributed to Kappos.

    You seem to want to be as selective in your memory of Kappos as you are in your selections of Supreme Court law.

    You are having the same effect: reduced credibility.

  47. Dennis: The Board has reduced the backlog in seven of the past twelve months. However at the present rate, the backlog will not drop below 5,000 for more than twenty years.

    I’m curious as to whether there is data on the rate of turn-over of the appeals. Is it just the turn-over (either upheld or granted or prosecution re-opened) rate that has increased that is responsible for the sudden change to a “steady state” (as opposed to rapidly increasing) backlog? Has the rate of appeal filing also decreased, but just not enough to allow the backlog to shrink in any substantial way? Or has the rate of appeal filing actually increased, thus swamping out any effect of the increased rate of turnover of appeals?

  48. The problem was, is, and continues to be poor examination

    Shall we pick some random cases from the backlog and see if that’s the case, Tr0llboy?

  49. Can anyone assemble number of patent applications, patent litigation, patent litigation by NPE, and this back log on one picture?

  50. …because paying judges (anyone remember the term ‘super-examiner’), to do what examiners were supposed to do in the first place makes loads of economic sense.

    /eyeroll

  51. is a historically new phenomenon.

    Ned – you forgot to include in your thinking the aspect of timing to reach a state of appeals.

    This places the cause not with Kappos, but with Dudas.

    It has been well documented that the ‘just say NO’ in the inNOvation culture of reject-reject-reject and the plummeting of the allowance rate from a somewhat steady 70-80% down towards a 30% percent simply moved the piles of backlog to the various other queues at the Office (for example, RCE and Appeals).

    The problem was, is, and continues to be poor examination that attorneys must take to their clients and explain that the examiner has NOT made a case yet for legitimately not granting a patent, and this simply moves the application from one deck chair to another.

  52. Interesting curve too as it means there are enough judges now to handle the load but for the backlog.

  53. Good point Ned. The long delay in the RCE process makes it more likely to appeal. From personal experience, though, this great run-up started with Dudas. I remember the firm I was working with that the partner in charge of a large software client just starting saying appeal it, appeal it, appeal it, towards the end of Dudas.

    But, of course, it is likely a combination of several factors.

  54. There seems to be somewhat of a correlation between Kappos and the backlog.

    From and examiner point of view, I think the most obvious thing that Kappos did was change the way examiners got credit. This might explain most of the backlog, but I do not know.

    Certainly, from an applicant point of view, extending the response to RCEs gave applicants a lot more incentive to appeal.

  55. Examples (or more detailed analysis) of the push for more indefiniteness rejections would be helpful.

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