As a follow-up to an earlier post on BPAI decisions; appeal efficiency and potentially over-worked Administrative Patent Judges, I took a look at BPAI decisions from January and February 2009. According to BPAI's statistics, the BPAI disposed of 993 ex parte appeals during that two month period. Based on the PTO's FY2009 numbers, about 9% of those disposals were either remands or dismissals without a decision on the merits. The examiner's rejection was affirmed in 55% of the cases; Affirmed-in-part in 14% of the cases; and reversed in 23% of the cases.
776 of the Jan-Feb 2009 ex parte decisions show-up in the Westlaw database. Those 776 decisions were authored by 78 different Administrative Patent Judges. During the two month period, four judges penned more than 25 opinions, although the average is closer to 10 opinions. (If we assume that Westlaw includes 80% of the opinions, then the average jumps to 12 opinions in the two months – or six opinions per month). On an annualized basis this extrapolates to authoring an average of 72 opinions per year. Of course, this average includes opinions by BPAI administration who regularly write only a small handful of decisions. Excluding those individuals pushes the extrapolated average to about 75 opinions per year for each BPAI Judge handling ex parte cases.
These numbers are comparable to the Court of Appeals for the Federal Circuit. Each of the twelve Federal Circuit judges (not counting Senior Judges) wrote about 28 majority opinions in 2008. In addition, each Federal Circuit judge participated in over 400 cases (most of which were decided without opinion). Thus, while the BPAI judges write more opinions, the Federal CIrcuit judges actually decide more cases.
Notes:
- The lower number of cases found in Westlaw is due – in part – to the fact that many of the cases being appealed are unpublished. In those cases, the BPAI decisions are kept secret. In addition, for some reason, Westlaw is not picking up all of the released BPAI decisions. Still, the Westlaw format is easier to use than the BPAI PDF.
Within the BPAI, an APJ must author between 100-120 decisions per year (depending on the technology area) to achieve a production rating of “fully successful”. Their production rates will typically vary during the course of the year. The number of issued opinions skyrockets in late August and September, where APJs stretch to meet their annual goals before the end of the fiscal year. They then go on vacations during October.
M&M:
From 35 USC sect 6(b): “Each appeal and interference shall be heard by at least three members of the Board, who shall be designated by the Director.”
From 35 USC sect 6(a): “The administrative patent judges [APJs] shall be persons of competent legal knowledge and scientific ability who are appointed by the Director.”
From 35 USC sect 3(a)(2)(A): “The Director shall perform [his/her] duties in a fair, impartial, and equitable manner.”
From The Sith Lord Rules of Rhetoric: Any time an argument isn’t going your way, change the topic. Never let truth or justice prevail. And above all, never speak in absolutes. The rule of law is merely an inconvenience. The seeds of FUD are your power. Sow them well and frequently. May the Darkness always be your company.
“Federal Circuit judges generally have three clerks.”
Which is still three more than most APJs.
patent king,
Federal Circuit judges generally have three clerks.
Well I don’t know why I would find it sad if indeed my rejection has merit and the foreign claims mirror those over here. How much better than having a premade OA can one get it in examining? However, upon further inspection, it appears that either the foreign examiner relied on the secondary reference in a way which the reference does not support, or the translation is poor. Because I needed the reference to teach what he said it taught after the most recent amendment. I went ahead and did a citation search and presto, there was a reference teaching what the foreign guy said the first secondary ref had shown, just what I needed.
The only thing in that situation I would find sad is if he actually had relied on the secondary ref for teaching something it did not, which there was no reason to do.
6 – bad choice of the word funny.
You meant, “funny,” as in, kind of weird.
Everybody reading your post is thinking “funny,” like an intellectually challenged goat that keeps trying to like the electric fence.
sad – on SO many levels.
“It’s so funny to see my work being relied upon by others.”
If you had any experience, you wouldn’t find this funny — just sad.
Today I’m here at the office finishing up some work before I leave to go out of town for a bit, and check this out. This case has an IDS with a Taiwanese action included. The Tiawanese action appears to have practically copy/pasted my rejection, using the exact same references and making all designations as I did. It’s so funny to see my work being relied upon by others.
From BPAI final rulings: in the period 4/24 to 5/7 (pre dissent memo), there were four dissents: (1) 10/832514, (2) 10/335788, (3) 09/338286, and (4) 10/280612. In the period 5/8 to 5/22 (post dissent memo), there were only two: (1) 10/765481, and (2) 10/324356.
ppd “If the PTO has a policy that discourages dissent and kept the policy secret (well that cat is out of the bag now thanks to Dennis and his sources) don’t you think that could be considered a type of “fraud” on the public”
Only if there is specific intent to fool the public into believing that a non-unanimous decision is unanimous. I don’t see any evidence that is the case here. Instead, I just the usual sloppy, misguided attempts to cut corners that are the hallmark of operating under budget constraints and backlogs.
Of course it would be nice to know if there were dissents and what the reasons were. It would also be nice if appeals at the PTO didn’t take years. Are the delays evidence of “fraud” at the PTO because the delays discourage the filing of appeals? The fact that you put the term in quotes suggests that you know the most likely answer to that question.
“The fallacy of considering this quasi-judicial set-up as anything on par with the actual judicial branch of the government is starkly evident. One only has to open one’s eyes and look at the mishmash of BPAI rulings, and the travesties of the Office’s power grabs in rule making.”
Becomes:
The fallacy of considering the district court set-up as anything on par with the actual judicial branch of the government is starkly evident. One only has to open one’s eyes and look at the mishmash of district court rulings, and the travesties of the government’s grabs in rule making. It has to be a fallacy that District courts are a part of our judicial branch considering the mishmash of rulings? Right? Lol.
Although he is right that there is no big issue with dissenting opinions of chief judges being “discouraged”. Personally I see the issue in a different manner, that of the lower decision making authority putting its full feelings on the subject at hand on the record. When a case goes to the CAFC, it should have all reasonable sides of the issue presented before it. Dissents help to ensure nothing is overlooked it would seem to me like.
ppd,
Your comments would ring true IF we were actually talking about “true” judges or a truly independent review of the Office proceedings.
We are not. The APJ are employed by the administrative Office and must follow their bosses directions. As such, no congressional hearing or change to the law is required or warranted (I shudder at what I type, not for the veracity, but because the APJ is even considered “judicial” – from the word “quasi-judicial”, I would strike “judicial”)
The fallacy of considering this quasi-judicial set-up as anything on par with the actual judicial branch of the government is starkly evident. One only has to open one’s eyes and look at the mishmash of BPAI rulings, and the travesties of the Office’s power grabs in rule making.
“what the … are you talking about?”
Malcolm – I believe that in the USA each judge on a three judge panel has the right, and some indeed would consider it an ethical obligation, to voice their differences (that might make a difference in the outcome of the case or others like it) with the other two judges, whether that be by concurrence or dissent. If the PTO has a policy that discourages dissent and kept the policy secret (well that cat is out of the bag now thanks to Dennis and his sources) don’t you think that could be considered a type of “fraud” on the public and the applicants who expect each judge to voice their own opinion? – especially when it makes a difference in the outcome of the case ??
If the PTO wants to do away with the inefficiencies of 3 judge panels (as their recent policies seem to indicate), it seems that a PUBLIC (Congressional) hearing on the matter would be in order, and IF there is support, change the LAW to require each appeal to be heard by ONE judge (versus the current 3 judge panel). In the meantime, the current law should be respected.
“Isn’t there some kind of fraud going on when the differing opinions of some APJs are stifled, suppressed and concealed and the PTO represents to the inventor and to the public that a unanimous opinion had been reached when in fact it was not unanimous?”
What the hell are you talking about?
“Isn’t there some kind of fraud going on…”
Not that I think it rises to the level of “fraud”, but shouldn’t we return to the time when the APJ were called Chief Examiners so as to avoid confusion (perception of fruad, perhaps) in thinking that the APJ behave like real judges, independent of the administrative branch and their bosses at the Office?
The Office abuse of the quasi-judicial power mucks up law and is a source of quasi-law that does more harm than good.
Isn’t there some kind of fraud going on when an inventor pays appeal fees under the expectation that his appeal will be fully considered by 3 APJs, good and true, and it is not?
Isn’t there some kind of fraud going on when the differing opinions of some APJs are stifled, suppressed and concealed and the PTO represents to the inventor and to the public that a unanimous opinion had been reached when in fact it was not unanimous?
Just wondering out loud.
we need more APJ’s and not clerks. I want APJs to be fully involved and making the Board decisions. Applicants have spent a lot of money and time to have their appeal decided and they are entitled to have APJs fully decide their appeals, not just sign off on clerk decisions.
“Ciao – I did indeed mean to say comparable. (1) The numbers are on the same order of magnitude. (2) While the BPAI Judges write more opinions, the CAFC Judges actually decide more cases.”
Let’s also not forget that each CAFC judge has got 4 clerks to assist them; an APJ is lucky if he’s got 1. Then again, according to your own “anonymous observer,” they don’t read anything in the file before making their decision on any given appeal, so I guess that doesn’t really matter much.
Dennis,
If by “decide” you mean “vote on,” I’m not sure you’re correct. BPAI judges may draft 75 opinions per year, but they vote on twice that many, don’t they (three judges per panel)? You need to compare apples to apples. You could compare opinions written to opinions written–it looks like that’s about 75 to 28. Or you could compare appeals the judge voted on–my guess is that is about 225 for BPAI judges (based on your 75 written number). I don’t know what it is for Fed. Cir. judges.
Ciao – I did indeed mean to say comparable. (1) The numbers are on the same order of magnitude. (2) While the BPAI Judges write more opinions, the CAFC Judges actually decide more cases.
How is 75 opinions per year “comparable to” 28 opinions per year? Don’t you mean to say “may be contrasted with”?
I would like to see more precedential BPAI opinions where the examiner is reversed.
Federal Circuit probably has a more educated and experienced and larger staff to help them than does the BPAI.