What Happens Following a USPTO Board Decision

By Dennis Crouch

The chart above provides further analysis from the prior post entitled Ex Parte Appeal Outcome by Assignee 2005-2013. The chart here shows the result following BPAI/PTAB ex parte decisions and is derived from a set of 21,000 applications associated with an appellate decision between 1/2005 and 8/2011. For the majority of cases, the appellate decision appears determinative. A major caveat to these results is that about 45% of the abandoned cases are associated with a continuation application filed prior to abandonment.

36 thoughts on “What Happens Following a USPTO Board Decision

  1. Ну наконец то получилось. История банальна: Моя мама не как не могла без шоу дом 2 жить, я долго думала, что ей предложить в замен этому надоедливому проекту. Мама не в какую не желала отказаться от просмотров дома 2, нечего не помогало, но вот я придумала подсадить на интернет просмотры маму допустим сюда: [url=

  2. Вот что было, наслушалась я басен, что мол раскрутится можно через дом 2, то есть через шоу дом 2. Короче почитала я [url=

  3. where are my answers?

    Why don’t you just make the answers up, Patent Jeebus? That has worked for you well in the past, hasn’t it?

    Bow down, everyone.

  4. illegal activities

    Behold! Patent Jeebus is here to tell us that hiring more Examiners is illegal! Must be something in the Constitution that only Patent Jeebus can see. Bow down, everyone.

    Your choice of remaining blind to this is a ‘you’ problem

    Please cure everyone’s blindnes with your magical words of wisdom, Patent Jeebus!

    mindless AND FAILED management techniques (throw more people at it) that were avant garde in the stone age.

    Patent Jeebus is here to tell us that hiring people never works! Bow down, everyone.

    What you call ‘hand-wavey’ Malcolm, is what propels advances in American business practice

    Please wave your hands some more, Patent Jeebus! I think if you wave them really really hard and fast, everyone will understand exactly what “propels advances in American business practice”.

    Maybe if you used italics in addition to caps and bold it would help you get your message across even better? Just a thought. Of course, you know best, Patent Jeebus. Bow down, everyone.

  5. specific, practical recommendations (other than the ones everyone, inculding mysself has advocated)

    LOL – advocating illegal activities are not ‘specific, practical recommendations.’

    Try again.

    And my point of ‘more of the same’ is most definitely not a strawman, as it is directly on point to one of your (not illegal) “specific” recommendations of merely hiring more. In fact, you repeat that same basis in your reply at 1:03.

    Here’s a hint: more of the same wont help. Wait, that’s not a hint, that’s one of the specific and practical recommendations that I made.

    What you call ‘hand-wavey’ Malcolm, is what propels advances in American business practice. Your choice of remaining blind to this is a ‘you’ problem, so do not mischaracteize my posts based on your chosen ignorance.

    We’re looking for practical solutions. You know, solutions that are relatively easy and quick to administer

    LOL – your English skills have taken another holiday, as a requirement (a first requirement) for a solution to be ana actual solution is that it needs to work. Your focus on “relative ease” and “quick to administer” employ the same mindless AND FAILED management techniques (throw more people at it) that were avant garde in the stone age.

    And again, the “Affirm Affirm Affirm” B$ is your CRP projecting and misrepresenting. Since you think the ‘whole system’ is a rigged game, I suggest (yet again) that you find a line of work in which you can believe in your work product. The dissonance created by you working in soemthing you plainly do not believe in is causing some serious warpage for you.

  6. Notice again the complete lack of any specific, practical recommendations (other than the ones everyone, inculding mysself has advocated) as to how to achieve the goal that Tr0 llb0y himself pretends to advocate for (improving the quality of Examination).

    More of bad examining will not let you fix a poor aim.

    Nice strawman. Nobody is talking about “more bad examining”, TB. We’re talking about improving the quality of examination by giving Examiner’s (and everyone else at the PTO) more time to examine patents and write better Office Actions. There’s a really straightforward and practical approach to that problem. Then there’s your hand-wavey nonsense.

    Like this:

    nice canard re: costing money

    Not a “canard” at all. We live in the real world. Any substantial and effective change to the PTO’s operating is going to “cost money” to implement because (get ready for this shocking revelation) people are going to have to implement the change.

    you might even find out that you don’t need as many examiners as you have now – or perhaps the types of examiners you have now.

    Or I might find out that you are just imagining things. Try to be more specific about what you are suggesting. You are aware that the rate of application filing is at an historical high, right? And that number is growing steadily, right? And the allowance rate somehow remains as high as ever, right?

    (the Office tried and failed to hire its way out before)

    “Tried and failed to hire its way out” of what exactly? Are you suggesting that the PTO should not have hired those Examiners?

    It is the elimination of wasted money that can be a critical driver.

    Sure, it “could be” the “critical driver” but I highly that’s the case and I’ve not aware of any serious argument that the “elimination of waste” would do anything significant to address the problem we’re discussin. We’re looking for practical solutions. You know, solutions that are relatively easy and quick to administer.

    people want a rubber stamp of Affirm-Affirm-Affirm

    People pretty much have that stamp right now, TB. Hence the mad rush of the already wealthy to get their chips on the table at the Great Patent Casino.

  7. Malcolm,

    That’s a non-answer. What’s the matter with you? So soon to be at a loss of anything substantive to add? Your drive-by QQ exhaust your abilities to converse? Or maybe you are afraid to torch more of your petty little ‘theories’?

    LOL

    • Which would necessarily slow things down and not achieve the purpose.

    WRONG – you need to take a bigger view, a complete lifecycle view of the process; you know, something that was discovered and applied in a business method advance – see Deming.

      So a practical response is to hire more Examiners… will, of course, result in the proper rejection

    WRONG – just hiring more examiners and doing more of the same only gets you more of the same (the Office tried and failed to hire its way out before) – you need to evaluate the process and at the very least fix what you are measuring – another advance brought to you by the scientific advances in business methods. More of bad examining will not let you fix a poor aim. Aim better first – you might even find out that you don’t need as many examiners as you have now – or perhaps the types of examiners you have now.

      Also, this will cost some money.

    LOL – nice canard re: costing money. The cost of money is not the proper focus – it is the return on your expenditure that is the proper focus. It is the elimination of wasted money that can be a critical driver. Again, something you could pick up from the science of business methods if you were not so busy pursuing your agendas, or trying to spin what other people have posted on this topic (your pathetic attempt to post that people want a rubber stamp of Affirm-Affirm-Affirm to replace the rubber stamp of Reject-Reject-Reject – as only you have ever indicated such nonsense).

  8. They’re already doing that. But I doubt we’ll see large improvements in quality. There will of course be some improvements though.

  9. Improve the databases, the classification systems and the examiner training — it actually may pay for itself in better and more efficient examination (and prosecution)

  10. Out of curiosity, is there any mechanism in place to bring those applications in which the Examiner was not affirmed, but in which the application was abandoned or still pending after some tome, to the attention of quality review personnel? If not, should there be such a mechanism?

  11. That you make mistakes is not surprising, MaxDrei.

    That you consider yourself ‘above’ those that correct you is, um ‘entertaining.’

    No small notice of just who is giving you the reach around, gee it’s Mr. Phhfft himself.

    Leopold, where are my answers?

  12. This whole line of reasoning is old. Improve quality of examination is not “the answer”, clearly would help, but not the determinative answer. Its short sighted.

    It’s a sound bite that is intended to convince the audience that the hearts of the patent bulls are in the “right place.” They really care!

    But note the inevitable lack of execution. When the patent bulls talk about “improving patent quality”, they really mean “stop making rejections we don’t like” and “Examiners need to work harder.”

    That’s why it’s always a surprise when a patent bull provides a creative (and reasonable) argument explaining why a particular type of computer-implemented method should have been rejected, what references should have been used and what legal arguments should have been made. And it’s also why it’s never surprising to see them insult someone else who performs such an analysis.

    Consider a construction crew. Everyone agrees that the construction crew isn’t doing great work. So what to do? One option is to increase the size of the crew, give the crew better tools, better raw materials and more time to complete the job. The other option is to simply screech “Better quality is the answer!” at the crew while simultaneously trying to take their tools away and dumping trash all over the worksite.

  13. Leopold,

    Ever aiming at the wrong target.

    Don’t you get tired of picking up the arrows at your feet?

    And where are my answers?

  14. Indeed LB.

    Up to now I had been mistakenly supposing that anybody who routinely misses the point, ignores all but the most recent posting in the thread, and is barely able to write in intelligible English, must be incompetent. But then I took a moment to educate myself on the difference between a patent troll and an internet troll. Until now I had supposed I knew what trolling was, but had not fully appreciated that an internet troll has an addiction that demands to be fed (at whatever cost) by responses (regardless of content, the more emotional the better).

    Deriding the troll, showing him up as sad and ridiculous, has not the deterrent effect it would have in front of a real audience that delivers its verdict with its laughter, because the troll operates anonymously, and does not hear the audience laughing at him.

    I get a good laugh from each of your sporting posts, by the way. And I’m still intrigued how my instructing US counsel and I could have misunderstood each other on the issue whether a claim amendment is or is not “broadening”. Thanks.

  15. Sometimes the US counsel is just doing what he’s told to do by the in-house counsel of the client who is doing what he’s told to do by his/her boss. For example, sometimes the US counsel is simply instructed to ask the question and get the answer from the EP counsel so there’s “no question” about (1) the answer or (2) the source of the answer.

    In the most annoying cases, the instructions “from on high” will simply be to “go for it” (regardless of the zero chance of obtaining anything enforceable) because “anything narrower just isn’t valuable to us.”

    Loads of fun for everybody.

  16. This whole line of reasoning is old. Improve quality of examination is not “the answer”, clearly would help, but not the determinative answer. Its short sighted. Quality all around should be better, starting with filing a good and comprehensive application. Ending with more definition from the courts, and really everything in between. Including every communication between the attorney and examiners.

    Restrict scope of infringement to exactly what is claimed, remove BRI from examination, and create some real burden to applicants to disclose relevant (and only relevant) prior art.

    What is reflected by the appeals data is just what is shown, reasonable minds can differ on interpretion and whether an examiner meets their burden. Its not necassarily bogus because the board affirms, maybe its the fact that you have not rebutted the weak rejection with any substance. Thats on you and your client. Filing a CON and try again.

  17. You want to really address patent quality and the backlog? The answer is simple on its face**: improve the quality of examination.

    **I recognize that this simple answer does mean more actual work for the examiners.

    Which would necessarily slow things down and not achieve the purpose.

    So a practical response is to hire more Examiners so they have more training time and more time to search and Examine each case. That will, of course, result in the proper rejection of patents that would otherwise not be rejected. But you’re okay with that, right? Because of the improvement in patent quality that will result.

    Also, this will cost some money. The fees will need to be raised to pay for additional hiring or Congress will need to provide additional funding. But if everybody gets together (e.g., the patent bulls and the leftists, who both believe the PTO could be doing a better job) and pushes for such changes, there’s a decent chance of something happen.

    What say you?

  18. Thanks, anon. I’m just trying to convince Max that not all US patent attorneys are incompetent. Your input drives home the point, I’m sure.

  19. Yes, that nails it – your initial post was incorrect as Leopold provides US case law showing so.

    Not sure how entertaining it is, MaxDrei for you to throw CRP against the wall to see what sticks.

  20. You mean to say that each sovereign dares to write its own laws…?

    (and you are still off in your view of US jurisprudence – possession is a requirement here too)

  21. I explain to them that with their amendment the claim covers something that was not covered prior to the amendment

    I certainly hope your explanation is more than that. After all, it is rather a trusism that an amendment changes what is covered by a claim. That’s what amendments do.

  22. From footnote 2 in Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033 (Fed. Cir. 1987):

    A claim of a reissue application is broader in scope than the original claims if it contains within its scope any conceivable apparatus or process which would not have infringed the original patent. In re Self, 671 F.2d 1344, 213 USPQ 1 (CCPA 1982); In re Ruth, 278 F.2d 729, 47 CCPA 1014; 126 USPQ 155 (1960). A reissue claim that is broader in any respect is considered to be broader than the original claims even though it may be narrower in other respects. In re Bennett, 766 F.2d 524, 226 USPQ 413 (Fed.Cir.1985); Ball Corp. v. United States, 729 F.2d 1429, 221 USPQ 289 (Fed.Cir.1984)

  23. I grant you that, LB. You have indeed given me that very advice, at least once, perhaps even more than once.

    Good to get your post, although it does nothing to reduce my bewilderment, because I have much respect for the instructing counsel whose comment I report above.

  24. Readers, anon’s comment brings me to the realisation that “new matter” under 35 USC 132 is not the same concept at all as the “subject matter which extends beyond the content of the application as filed” of Art 123(2) EPC. This is how it can be, that the USPTO can enforce the provisions of 35 USC 132 as strictly as it pleases, without ever coming near to prohibiting what is seen under the EPC as adding matter to the application as filed.

    In Europe, any matter which is not “directly and unambiguously derivable” by the PHOSITA from the appln as filed is “new”. This is why it so often happens that an intermediate generalisation in an amended claim is seen in Europe as new matter, but not at the USPTO.

  25. Incidentally, it puzzles me when instructing US patent counsel urges on me broadening amendments during post-issue opposition at the EPO. I explain to them that with their amendment the claim covers something that was not covered prior to the amendment. They tell me that, at home, that is not the test for whether any particular claim amendment is a broadening one. This leaves me scratching my head in bewilderment.

    I’ve told you before, Max, you need to associate with better US counsel.

  26. MaxDrei,

    You mistake what I am calling overplayed.

    It is not the action of keeping something pending – it is your reaction (of badness) that is overplayed.

    And I sit in the US where the statutory prohibition on adding matter is ALSO strictly enforced. I recognize that you believe otherwise.

    That is a ‘you’ problem.

    As to when a broadening amendment can be pursued, well, at least you recognize some difference in law (whether you seek to sugar coat that difference in an attempt ot reach some ‘higher’ trans-national ‘should-be’ law remains to be seen).

  27. Overplayed? I don’t think so. There are good commercial reasons, in cases of value, to “keep something pending” at the USPTO for as long as possible.

    I sit in Europe, where the statutory prohibition on adding matter is strictly enforced. I appreciate that there is a statutory prohibition on adding matter to what is pending at the USPTO but, in practice, I don’t see it being enforced. Rather, I see the 112 WD requirement being used to block the insertion of what I would call new matter, into cases pending at the USPTO, and not yet issued.

    You have a claim broadening cut-off two years after issue. Our cut-off in Europe is with issue. There is no prohibition on claim widening till then, in either jurisdiction, and it is what is pending, not yet issued, that Applicant relies upon, to maintain the uncertainty.

    Incidentally, it puzzles me when instructing US patent counsel urges on me broadening amendments during post-issue opposition at the EPO. I explain to them that with their amendment the claim covers something that was not covered prior to the amendment. They tell me that, at home, that is not the test for whether any particular claim amendment is a broadening one. This leaves me scratching my head in bewilderment.

  28. In this correlation lies a pearl.

    When examination is accurate (e.g., of high quality), ‘determinative’ is more readily achieved.

    When examination is not so, applicants will fight for what they deserve (within certain constraints, like cash flow and risk management).

    And even though some refuse to acknowledge even the existence of the Reject-Reject-Reject era, there is an undoubtable correlation between that era and the multiple deckchairs of the backlog. The math is unmistakable and undeniable.

    Take the infamous ‘quality’ measure of the Dudas era as captured in the Allowance Cliff graph. Flip that graph upside down and overlay it on top of any of the backlog charts, adjusting for lifecycle timing.

    Plain and simple folks: when I take a bogus rejection to the client, point out why it is bogus and ask the client what direction she wants to pursue, the answer is predominantly to pursue her rights. A quality rejection on the other hand is more likely to stop pursuit.

    What is reflected in the Appeals data is what should be recognized upfront: the Article I court is not a disinterested and objective party. They are still merely “super-examiners.” And even when these “super-examiners” make bogus rejections, the client will likely still pursue their rights.

    You want to really address patent quality and the backlog? The answer is simple on its face**: improve the quality of examination.

    **I recognize that this simple answer does mean more actual work for the examiners. But the general impression of ‘key word search and cut-n-paste near auto-rejections’ is not cutting it as ‘determinative’ for the clients’ applications.

  29. MaxDrei, I think your point of “Bad news, it seems to me, for any competitor seeking a clearance opinion.” is a little overplayed.

    It does mean that you cannot rely solely on claims to formulate you opinion, yes.

    But with the fact that no new matter can be added, and the limited two year window for seeking broader claims, you have everything you need at the file date to determine absolute clearance and to determine relative risk of non-clearance.

    I would reject the notion that just because it may not be easy for you (i.e. only looking at claims), that determinations cannot be made.

  30. MaxDrei – Thank you for this comment. My use of the word “determinative” is too strong. Rather, the only point that I am intending is that there is a strong correlation between the Board outcome and the current status of the application. Affirmance of the examiner rejection correlates with a large percentage of abandoned cases while Reversal and partial-reversal correlate with a large percentage of patented cases.

  31. Dennis, may I ask, what exactly do you mean by “determinative”?

    Given the urge amongst USPTO filers to “keep something pending” I suppose that even the cases you count under “patented” will oftentimes still have “something pending”. If one conservatively assumes the proportion of such cases is no higher than the 45% you say is present in the category of “abandoned” cases, we get in aggregate to more than 50% of all the 21000 cases where the Board Decision was NOT determinative, at least of the fun and games at the USPTO. Bad news, it seems to me, for any competitor seeking a clearance opinion.

    Do any appellate decisions get appealed to the court? If there are any, are they in the “Still Pending” class?

  32. That is one major caveat, swinging the result of an adverse decision effectively to mostly being ‘still pending’ or in other words, the applicant still believing that something patentable remains in the application.

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