The Board of Patent Appeals and Interferences has seen a tremendous upswing in its workload over the past couple of years. The swing was largely triggered by the prospect of rules limiting the filings of requests for continued examination (RCEs). However, it appears that applicants and patent attorneys – who are now familiar with the process – are continuing to see appeals as a viable alternative even though the RCE limits appears dead-in-the-water. Of course, the appeals have also been driven by the increasing percentage of applications being finally rejected by examiners.
In a recent presentation, BPAI Chief Judge Fleming provided a useful survey of the “state of the Board.” Highlights below.
- In FY2009, the BPAI is expected to have decided over 7,000 cases. That represents more than a 40% increase over FY2008.
- In addition, it is expected that over 15,000 cases will have been docketed to the BPAI in FY2009. That number is well over double those docketed in FY2008. This leaves an ‘inventory’ of about 12,500 cases.
In its current form, the BPAI cannot keep up with demand. By the end of FY2010, Judge Fleming expects the backlog to extend over 21,000 cases. The office currently has a three-prong approach to fixing the situation: (1) hiring more BPAI judges; (2) hiring more patent attorneys who essentially serve as law clerks, drafting opinions that are eventually approved by the Board; and (3) improving BPAI efficiency.
Notes:
View the presentation: bpai_092109.pps
6: “there is merely empty allegation and conjecture.”
You mean, besides the facts that Ron has compled – the facts that 6 and Malcolm refuse to acknowledge?
…thought so.
Malcolm: “…apologize for causing you to jump to absurd conclusions and/or hurl insults.”
Yes, especially since jumping to absurd conclusions and hurling insults is Malcolm’s prized role on the Trainwreck – How dare anyone try to take that role, you… you… TROLLS.
Malcolm – of the 6006 cases…
Continue to be disingenuous – it shows your examiner training oh so well. We both know that the cases I refer to (in Ron’s work) are the cases that don’t make it to the Board’s docket (which make the 6006 a drop in the bucket).
Continue to misconstrue the facts put forth by Ron – obfuscate and run away – those or your only choices, since you cannot add anything of substance without putting down your shield of persistent ignorance.
“The problem with many of the APJs is that they are former Examiners with no outside experience. The best APJs should have experience on both sides of the fence.”
Actually, a number of them do. And btw, what’s your point? That we’d see 75% or greater reversals if we only appointed former patent prosecutors as APJs??
“maybe more outside patent attorneys should be made BPAI judges”
Most wouldn’t be willing to take the pay cut or else have too big of an ego for government work.
“Okay. But as I noted, the PTO has the ability to control which cases go to the Fed. Cir. They can pull any case they want simply by requesting a remand.”
Yes, and I’m sure that happens ALL the time.
“And let’s face it, those 5 reversals demonstrate a pretty embarrassing ignorance of the law on the part of some of the APJ’s.”
Yes, unbelievably-phucking-embarrassing. But do you know of any court or administrative board in this country with a 100% affirmance rate on appeal?? No??? Didn’t think so.
“The BPAI is simply making this up, knowing that 90% of applicants will not absorb the costs of appealing their decision. It has become a kangaroo court. If Kappos is serious about fixing the PTO he will rescind the new appeal rules and restore the Board to its proper role of reviewing final rejections for compliance with the law.”
Let’s have a look at the numbers, shall we? To date (FY2009), the Board has reversed (as in COMPLETE reversal) an average of 24.6% of all cases. In addition, the Board has “affirmed-in-part” (i.e. “REVERSED-in-part”) another 13.9% of all cases. That’s nearly a 40% (FORTY PERCENT) chance of having the rejection OF AT LEAST ONE CLAIM reversed on appeal. How is it then that they are just summarily affirming Examiner’s rejections, making stuff up, blah blah blah??
“Of 6006 total cases handled by the BPAI, there were 31 panel remands, 392 administrative remands and 110 dismissed cases. So BPAI judges remanded 31/6006 or .5% of cases, while administrative remands for defects in the appeal represented 392/6006 or 6.5% of cases. The dismissed cases don’t indicate why they were dismissed, but they represent another 2% or so of cases.”
So where’s the “enormous” number of cases “swept under the rug” that would radically alter the statistics, as the troll was ranting about upthread? I guess it was just pure b.s. after all. Shocker.
“I says: Malcolm, I’ve seen your posts around here and have wondered what your deal was. With this post you have outed yourself as either an examiner or an utterly incompetent attorney who fails to understand case law. ”
I meant In re Gleave, not Kubin. I apologize for causing you to jump to absurd conclusions and/or hurl insults.
To: Don’t bother,
You asked about the frequency of remands at the BPAI and the “transparency”.
If you go to link to uspto.gov
you will see the cumulative statistics for 2009.
Of 6006 total cases handled by the BPAI, there were 31 panel remands, 392 administrative remands and 110 dismissed cases. So BPAI judges remanded 31/6006 or .5% of cases, while administrative remands for defects in the appeal represented 392/6006 or 6.5% of cases. The dismissed cases don’t indicate why they were dismissed, but they represent another 2% or so of cases.
Thus, panel remands are reasonably rare, administrative remands somewhat more common.
Since the BPAI now posts all of its decisions on published cases, it would be possible to look at individual remands (at least in the 31 panel remands), if you had such an interest.
“Yet you dodge actually answering the substantive points put forth on the Appeal stats readily available that Ron has put forth.”
There is no “substantive point”, there is merely empty allegation and conjecture.
Funny that you can’t tell when you yourself are engaging in conjecture Noise, and yet you’re happy to point it out to others when they do.
Malcolm says:
“ugggh “So apparently “reasonably similar” is now the standard for anticipation under 102.”
The Federal Circuit has approved of this reasoning in certain fact situations. See, e.g., In re Kubin.”
I says: Malcolm, I’ve seen your posts around here and have wondered what your deal was. With this post you have outed yourself as either an examiner or an utterly incompetent attorney who fails to understand case law. Kubin was an obviousness decision, which falls under 103. It has no application to anticipation under 102. To the best of my knowledge, there is no case law that undermines the well-established strict identity test for anticipation.
The BPAI is simply making this up, knowing that 90% of applicants will not absorb the costs of appealing their decision. It has become a kangaroo court. If Kappos is serious about fixing the PTO he will rescind the new appeal rules and restore the Board to its proper role of reviewing final rejections for compliance with the law.
Malcolm,
Come back when you are serious – regarding your post at 4:28 PM, in which you seek to denigrate and not even have the courtesy of addressing me as a person.
All you offer are typical examiner obfuscation and evasion. You and 6 are quite the pair.
When I answer your call for evidence with Ron K’s work, you respond that the work should be published on more than this blog, and when you realize that Ron’s work HAS been published on more than this blog you escalate the issue to a massive fraud and theft criminal probe (your own leading questions mind you – you assume that powerful players would demand such).
Yet you dodge actually answering the substantive points put forth on the Appeal stats readily available that Ron has put forth.
Your silence, like 6’s, is deafening.
Tell you what, when you decide to stop running from substantive challenges, we’ll discuss my authority to take up criminal proceedings. Let’s stick to the point proper to this channel, m’k?
Malcolm,
I’m half serious.
I think there may have been a tiny bit of hyperbole in NAL’s post. I’m not subscribing to her viewpoint whole heartedly, but there is a grain of truth in her post.
The Board is a political creature. And they are not immune from pressure from their master. I don’t think it’s any secret that their master (is he still there, Mr. Toupin?) is (was?) not exactly an applicant’s best friend. Wasn’the the one who told a group at an ABA convention that the continuation rules were going into effect whether the patent bar liked it or not?
I also think it’s pretty naive to believe that the Board is not engaging in result oriented decision making. They’re human and that’s just human nature. As most of the APJ’s are former examiners with no private practice experience, it’s not exactly a stretch to argue that they may have a bias toward the examiners’ decisions.
As for remands, outside of a FOIA request, I don’t know of anyway to determine how many they issue per year. My own personal opinion is that we would probably find they are not as “rare” as they are supposed to be.
To answer your question about why there is a lack of outrage, I think that can be partly answered by the complete lack of transparency over there. If the PTO actually published everty petition decision and every remand and applicants and practitioners could see the shenanigans that go on as a matter of course, there might be some outrage.
I’m almost past outrage. At this point, I’m just disgusted.
“Actually, 5 reversals and 22 affirmances, or an overall affirmance rate of about 81%.”
Okay. But as I noted, the PTO has the ability to control which cases go to the Fed. Cir. They can pull any case they want simply by requesting a remand.
And let’s face it, those 5 reversals demonstrate a pretty embarrassing ignorance of the law on the part of some of the APJ’s.
Do those reversals come up in the APJ’s annual review? My guess is they don’t.
if the BPAI were fully staffed so that there was essentially no backlog; probably twice as many cases would be appealed. examiners would then realize that they had to issue solid final rejections (or else allow the case) because they could not depend on applicants going the soft RCE route. assuming the the BPAI issues well thought out decisions, the examiners (and applicants) would also learn something — making the entire process more efficient
maybe more outside patent attorneys should be made BPAI judges, maybe taking care at least initially that a majority of a panel are not former outside patent attorneys — to give a different perspective and viewpoint
Good comment, Cess Pit. I used to think that English common law (with witness evidence, cross-examination, discovery and binding precedent) had the edge over civil law jurisdictions that are lacking all of these. But civil law is an advantage at the EPO, where ordinary Examiners are constantly involved in bitterly fought inter partes post-issue proceedings over claim validity, and take back to their pre-issue work the wisdom gained in all those “oral proceedings” (in which they revoke as many claims as they uphold, and amend the rest.
“I’ve had a couple other appeals in which the BPAI has reversed the Examiner’s 102 rejections, but then issued their own 103 rejections.”
I’ve also seen something akin to “reasonably similar” in decisions from the BPAI. For the BPAI, “close” is good enough for both hand grenades and 102 rejections.
The problem with many of the APJs is that they are former Examiners with no outside experience. The best APJs should have experience on both sides of the fence. I’ve seen too many decisions in which the APJ reverted back to Examiner mode and proceeded to prosecute the application based upon their own findings of fact and claim constructions.
I’ve also seen the BPAI employ some very dubious footwork to get around a 102 rejection that plainly missed and was pointed out in a Request for Rehearing. Speaking of which, the filing of a Request for Rehearing is the biggest farce. I’ve seen a LOT of Request for Rehearings, yet I have never seen the BPAI back down once.
“The Federal Circuit has approved of this reasoning in certain fact situations. See, e.g., In re Kubin”
Classic Examiner application of case law — completely wrong. The “reasonably similar” comment was directed to a 102 rejection, which is completely absent from the Kubin decision.
“And there’s been what, about 4 reversals of the BPAI this year by the Fed. Cir.”
Actually, 5 reversals and 22 affirmances, or an overall affirmance rate of about 81%.
ugggh “So apparently “reasonably similar” is now the standard for anticipation under 102.”
The Federal Circuit has approved of this reasoning in certain fact situations. See, e.g., In re Kubin.
“My clients appeal regularly, almost religiously. Two years ago I was winning every appeal. In the past year I have lost numerous appeals, even of 102 rejections.”
I seem to recall another commenter posting here recently about he wins almost all of his appeals.
Odd.
The BPAI appears to be committed to resolving the backlog problem relatively quickly by summarily affirming rejections by the examiner.
My clients appeal regularly, almost religiously. Two years ago I was winning every appeal. In the past year I have lost numerous appeals, even of 102 rejections.
In one appeal the Decision on Appeal included an explicit finding of fact that the cited reference did not disclose one of the elements recited in the claim, but concluded that the claims were anticipated anyway. I filed a Request for Rehearing pointing out the error. In response, the Board revised their findings of fact to find that the cited reference did disclose the limitation in the claim. It was shameless doublespeak.
In another appeal the Board explicitly admitted that the cited reference did not disclose a limitation of the claim, but stated that the disclosure of the cited reference was “reasonably similar” to the claimed subject matter. So apparently “reasonably similar” is now the standard for anticipation under 102.
In a third appeal the Examiner raised new arguments in the Examiner’s Answer. I responded to them in the Reply Brief. The Board held that the Examiner’s Answer adequately made a case for anticipation, and refused to consider the arguments presented in the Reply Brief because they weren’t presented in Appeal Brief. Make some sense out of that.
I’ve had a couple other appeals in which the BPAI has reversed the Examiner’s 102 rejections, but then issued their own 103 rejections.
The very clear message from the BPAI is that applicants will not get a fair hearing at the BPAI. It won’t take long for applicants to figure out that they aren’t going to get anywhere at the BPAI. I’m afraid that the future of patent prep and pros is to either take extremely narrow claims that the Examiner will allow or to appeal to the Fed. Circuit. Not pretty.
“Is there a penalty for examiners if they lose on appeal?”
They have to live with the fact that there is likely one more invalid patent floating around out there if they allow. Eventually you stop caring.
“So there’s some evidence of the PTO cherry picking the cases that go to the Fed. Cir.”
I’m sorry, I missed what the evidence was, could you point it out for me specifically?
In any event, I’m reading this book “software patents” and in specific I’m reading the forward about the history of patents. Very good read for everyone.
link to books.google.com
Trust me.
Eventually he goes off into non sequitur land as software practicioners are want to do, but he does do a wonderful job chronicling the history.
And man, look at what the presidential commission suggested. We’d be living in patent heaven and nobody would ever complain. Except about 27.
dont bother, I just want to confirm something: you’re not joking?
That comment of yours is your idea of evidence that the BPAI “cherry picks cases and rubber stamps to arrive at that high affirmance rate and how it sweeps under the rug the enormous number of cases that would drastically change that rate”?
You have one example of a remand in 2007 and another example of a situation where the solicitor disagreed with the BPAI about an alleged “POS rejection”, and 4 reversals of the BPAI? This is your evidence of “sweeping under the rug” “the enormous number of cases that would drastically change that rate”?
If so, then you have answered my question as to why nobody has followed up on the alleged corruption at the PTO. The answer is that it exists only in the minds of a few unhinged commenters here who never saw a patent they didn’t like.
“I know of at least one upper echelon Examiner was very publicly fired after review of some of his allowances by the second pair of eyes program.”
What was the name of this very publicly fired Examiner? I’d like to see the claims he allowed.
“Is there a penalty for examiners if they lose on appeal?”
As far as I know, only that they have to do more work without getting another count towards their bonus. The threat of being fired for allowing a case has been, of course, much worse.
I know of at least one upper echelon Examiner was very publicly fired after review of some of his allowances by the second pair of eyes program. It doesn’t take many occurrences like that to put a stop to allowances. That is where the reject, reject, reject policy has come from, and only those that practice it at the USPTO have risen in the ranks over the past few years.
Some apparently honest and truly concerned Examiners have posted here at the O that they have SPEs who refuse to allow any cases at all. Hopefully, the purported shift in second pair of eyes from allowances to rejections after 2 RCEs will result in the needed change in Examiner attitudes.
“If the examiners couldn’t re-open and the BPAI couldn’t remand, the problem would be that the patent becomes easy to knock out in litigation.”
Why? It seems to me you’re assuming that the art the examiner comes up with after re-opening, or after a remand from BPAI, is better than the art that was appealed.
Never assume.
Posted by: don’t bother | Sep 28, 2009 at 04:45 PM
If the examiners couldn’t re-open and the BPAI couldn’t remand, the problem would be that the patent becomes easy to knock out in litigation. Not even the patentee wants that.
Is there a penalty for examiners if they lose on appeal?
“Evidence?”
See, for example, the 3/14/2007 remand in 10/680,763. Turned a reversal into a never had to decide.
Remands are supposed to be rare. They’re not that rare. The Board has the power to punt any POS examiner’s answer back down to the examiner. And they use it.
So there’s some evidence of the BPAI cherry picking the appeals they have to decide.
See also, for example, 10/190,039. BPAI affirmed POS rejection. The affirmance was a POS. Applicant appealed to Fed. Cir. and the solicitor went crying to the court for a remand because they acknowledged the rejection, and the affirmance, were POS.
So there’s some evidence of the PTO cherry picking the cases that go to the Fed. Cir.
And there’s been what, about 4 reversals of the BPAI this year by the Fed. Cir. for failing to provide substantial evidence support. 09/772,278 (the In re Skvorecz case) for example. And the illuminated fishing rod. And the tampon case.
It’s the lowest standard in the universe, yet the BPAI can’t meet it.
Pitiful.
Just imagine what the “affirmance rate” would be if the examiners couldn’t re-open and the BPAI couldn’t remand, or enter new grounds.
It would be about 3%. At best.
Imagine what the “affirmance rate” would be if the BPAI actually had to decide the case on the examiner’s rejection, instead of re-examining the application and conjuring up all new “findings of fact” that were never in the record prior to the BPAI decision.
It would be 0%.
Rather than address the troll directly, I’ll merely point out that its proposition that the board “cherry picks cases and rubber stamps to arrive at that high affirmance rate and how it sweeps under the rug the enormous number of cases that would drastically change that rate” has no basis in fact.
Perhaps the troll’s hero du jour, Ron Katznelson, can lay out those facts for us. Of course, such a bit of journalism shouldn’t be confined to the comments section of a patent blog, even a relatively widely read blog like this one.
If the PTO is as corrupt as the troll states, that is a story meriting national attention in the Wall Street Journal, New York Times, and the networks. Does the troll have a theory as to why the allegedly “enormous” amount corruption at the PTO isn’t receiving the attention it deserves? It’s especially odd given that giant corporations — e.g., some of the PTO’s biggest customers — are notoriously aggressive when it comes to making sure that stories of government corruption are quickly mainstreamed, lest the corruption negatively impacts the corporate bottom line.
I wonder why the “enormous” levels of corruption alleged by the troll seem to have generated such little interest? But I’m getting ahead of myself. We should first wait for the troll to present the facts supporting the alleged corruption. Names of the particular PTO officials who are believed by the troll to be conspiring in the alleged fraud and theft would be particularly welcome (and, of course, necessary if the alleged problem is ever to be taken seriously and fixed).
“I contend that frequently the answer is that the Examiner is not persuadable.”
This.
Noise I don’t believe that your “evidence” supports using the term “cherry picking”. Sure, the merits of the cases are gone over before they go to the board, but that really isn’t the same thing as “cherry picking” as the term is commonly used.
And I don’t think MM does either.
“Evidence?”
Malcolm, I would expect such question from people new to this blog, or people such as 6 who have no reading comprehension since I just directed those seeking more information (and evidence would fall into that category) to Google Ron Katznelson.
Or perhaps you are just being honestly gratuitous in ignoring the voluminous postings this site has had concerning the Appeals debacle?
…thought so.
“how it cherry picks cases and rubber stamps to arrive at that high affirmance rate and how it sweeps under the rug the enormous number of cases that would drastically change that rate”
Evidence?
All4Vols,
Along the lines of the comment before yours, you need to understand the entire story with the BPAI, including how it is merely an enforcement arm of the Office, how its judges lack true independent judicial authority, how it cherry picks cases and rubber stamps to arrive at that high affirmance rate and how it sweeps under the rug the enormous number of cases that would drastically change that rate.
Google Ron Katznelson. Ron has done a tremendous job of putting together the damming facts.
Why then, do applicants pursue such a jaded route? Mainly, because the gravy train RCE route is the main alternative, and the reject-reject-reject philosophy coupled with the gravy-train RCEs only results in very expensive no’s to applicants’ quest for inNOvation.
The responsibility for the pressure on the BPAI has to be shared – but how, why and with whom? Let’s share it between the BPAI and the Office that dictates the agenda to them. Blaming the customer here is as passé as blaming the applicants for the volume of business at the Office, and falls to the same anti-patent fervor that sickens the patent bar and those they represent.
Nice stats. More are needed. What is the rate of affirmance on those appealed cases? My limited information tells me it’s as high as 80% in some technologies with an average of around 65%. So why are so many applications being appealed? Are practitioners hoping the standard of patentability will change if the case is kept pending long enough? The responsibility for the pressure on the BPAI has to be shared. Don’t fill the USPTO’s coffers with applications for frivolous inventions or the Board’s with applications where the issues are already well defined. Prosecute early. Present an application to the office that clearly puts forth the contribution to the art and ensure it’s clearly claimed. Then a decision can be reached more quickly and if a meritous disagreement results, send it to the Board.
Can someone post a link to the Ron Katznelson statistics referenced above? In particular, are there any statistics on Notice of Appeal filings, as opposed to docketed appeals?
“Further, your precious deference of administrative power always had limits and the Office has a history of being smacked down in light of those limits.”
Only once the courts started usurping the role that congress mandated was the PTO’s. If you think differently, then please, show me all the voluminous caselawl from 1835-. To their credit, the courts were merely dealing the best they could with an unmanageable statute handed to them by congress.
No dear Noise, I have very much correctly stated what the state of the agency was.
You could be right, it could be true that all the Examiners suck, then when you lose on appeal, all the judges suck, then when you lose at the federal circuit, all of the federal circuit judges suck, or, . . . .
if the Examiners suck so bad, it should be pretty easy for you to win on appeal, and yet, . . . .
there is always someone else to blame
6,
You’re thinking of the wrong country – that was Nazi Germany that squashed (sic) things under the boot heel. This country has always had a fierce independent streak against too much government.
Further, your precious deference of administrative power always had limits and the Office has a history of being smacked down in light of those limits. When the Chevron Deference is replaced with the Kappos Deference (as the limitaion rules fiasco may be come to be known), your lack of deference will be even more pronounced.
Amazing how wrong you can consistently be.
” This is the manner in which the founders thought the government should operate. ”
That’s funny, because iirc you couldn’t even sue the director in DC for a patent during the founders time.
You forget, during the founders time there was a thing called administrative agencies. And they were given substantial deference over their areas of expertise. From what I read on the subject, they were given a sht ton more than agencies are now.
Looking back in time with rosy glasses is not appropriate for qqers in the patent sphere. Nearly everything that people cry about today would have been squashed under the office’s boot heel back in the day.
You’re coddled children today compared to what people were back when.
Znutar,
Your reply has been received and found to be not persuasive.
Proceed to canned response of your choice:
RCE
Appeal
Give up
– your friendly automated USPTO examiner
/sarcasm off
“Uh, well, if clowns would stop filing bogus patents which should be automatically rejected for obviousness, perhaps the examiners would be less terse about pointing out that they are in fact obvious.”
Thanks for the flip reply. You probably put more original thought into that than your last communication to an applicant. Sorry you don’t have the time to do your job properly; the applicant paid the money and deserves better. I have the luxury of time to actually read the references you cite, and to explain at length why your 30 second read misses the point. The form paragraph reply to a well reasoned answer is simply an insult.
“Uh, well, if clowns would stop filing bogus patents which should be automatically rejected for obviousness, perhaps the examiners would be less terse about pointing out that they are in fact obvious”
Do a search on the phrase “due process.” It is something that has been sorely lacking in the government for quite some time.
I think the best way to improve the patent process is to allow applicants to sue the Director for a patent in any District Court in the country. Not until the Article III tribunals can review the problems with the examination will there clearly be a change in the handling of cases by the Article I tribunal. This is the manner in which the founders thought the government should operate. The district court can reverse administrative decisions when there is a lack of substantial evidence supporting the examiner’s conclusions or the wrong law was applied. With many of the Office actions I have seen that warrant appeal there is clearly a lack of evidence presented, because the Examiners have not been articulating a rationale for the rejections.
“Two, there’s no thought going into 103 rejections. For example, one gets an OA that says it’s obvious to include X from ref A into the system of ref B; the applicant provides reasons why one wouldn’t include X; the examiner hauls out the form paragraph about bodily incorporation; notice of appeal. The OA specifically said it would be obvious to bodily incorporate – that’s what “include X from ref A into the system of ref B” means. If the examiner had something else in mind other than bodily incorporation, what might that be? And there’s typically no indication about how/where the allegedly obvious modification will be made.”
Uh, well, if clowns would stop filing bogus patents which should be automatically rejected for obviousness, perhaps the examiners would be less terse about pointing out that they are in fact obvious.
My personal troll (okay, so I share it with 6 and MD) is clicking off its own comments now? How generous of it!
“APJs act like they are issuing court of appeals rulings, thats what you get if one has too much time on their hands. Case in point is In re Bilski.”
I think the APA requires that, doesn’t it? I think you’d be singing a very different tune if Board decisions weren’t as *thorough* as they are now. Also, regarding your views on BPAI inefficiency, your view implies that nearly 100% of APJ/attorney time is spent writing opinions. That’s not the case – before they can write an opinion, they first have to review the file and make a decision on the appeal, not always and easy task considering some cases have been in prosecution for *years*. It also doesn’t take into consideration the skew in numbers from those APJs/attorneys working on interferences -they do write opinions for ex parte appeals but not as many as those APJs/attorneys spending 100% of their time on appeals and 0% of their time on interferences. Also, where are you getting your numbers for APJ/attorney vs Examiner output?? Assuming your “6” number for Examiners is correct, you mean 6 *counts* right and not necessarily 6 new FAOMs? It’s not necessarily that hard for an Examiner to get 6 *counts* with abandonments, RCEs, and maybe 3-4 FAOMs.
Best solution is improving BPAI efficiency.
Currently the most BPAI judges have Patent Attorneys as “law clerks”. But, the combined output is for each “Judge + Patent Attorney” team is 4 cases every two weeks. While a Examiner paid a lower salary is outputs 6 cases, this includes the search and rejection.
COMPARISON:
BPAI
Judge: 150K+
Patent Attorney: 100K
Total: 250K
Output: 4 Cases
Examiners: 80K
Output: 6 Cases
Key is that BPAI does not have to search or write an office action.
Their job is pretty easy:
If Rejection = Proper Then Affirm
If Rejection =! Proper Then Reverse
In terms of cost per unit, they are the most inefficient. It would be some else if BPAI was self sustaining through it fees collected in appeal. But, such fees does not even cover the salaries of judges. It is the drain on the entire system.
APJs act like they are issuing court of appeals rulings, thats what you get if one has too much time on their hands. Case in point is In re Bilski.
“I’ve never denied that the PTO was trying to clean up its image as a group of rubber-stamping 3rd tier engineering majors…”
Is that why you’re examining, Malcolm? Because you’re a 3rd tier engineering major?
Explains a lot.
BWWWWAAAAAHHHHHHHAAAAAAAAHHHHHHHHAAAAAAAA
“Who are the pencil-necked whiz kids that you may have in mind who could do better job at examining? I’m curious (not the poster).”
Uh … just about anyone with a functioning brain? The way you act so surprised almost makes me think that you have no idea what sort of issued claims I’m talking about. I’m talking, for example, about the loads of issued patents that cover “methods of doing that thing that people were doing before I filed except this is on the web.” And then the Examiner only searches “web-based art.” The same bullsxxt continues to happen all the time. Don’t you remember when certain Sunners here would argue that the real world wasn’t “analogous art” to the virtual world? That’s because those arguments *worked* on the mindless drones flailing away the PTO.
“just pointing out reality for those that refuse to recognize it.”
As am I. Why is there such a big difference between the art units anyway? I’ve asked the question before and I’ve proposed answers. Different people with different educational backgrounds tend to behave differently when confronted with asinine fist-pounding types of the sort that tend to wank here day in and day out about how their “bad” rejections.
“Anon, the “we are no worse than anyone else” argument is lame. LAME!”
I’m not saying USPTO is better/worse than anyone else – – just pointing out reality for those that refuse to recognize it.
Anon, the “we are no worse than anyone else” argument is lame. LAME!
“The increase in appeals was a direct result of the implementation of the “quality=reject, reject, reject” directive given to the examining corps.”
Broken record – – the “reject, reject, reject” game is NOT unique to the PTO. See Brimelow’s statement at link to ip-watch.org . . . “About 60 percent of the 200,000 applications received in 2008 are expected not to proceed to grants, said Brimelow. They are not self-financing, meaning that in effect the remaining 40 percent will subsidise the entire system.
Such a system helps those that are “gaming” it, she added. Part of the expectation of the market is that innovative companies have pending patents, so that it is economically helpful to have applications filed, explained Brimelow. She said she had quotes to the effect of “I don’t really care if you grant or not, I just need the patent pending.” But, she said, “this isn’t what the IP system is meant to do.””
“Frankly, I wish more applicants would appeal rather than argue the same thing over and over.”
Amen sister!! If you think you have a case, by all means *PLEASE* appeal and get out of my face already.
“My question is, why doesn’t the Office of Employment and Discipline have records for all of the patent attorneys working for the BPAI? Are they really all patent attorneys?”
Yes, they are all attorneys, don’t know if a registration # is required for the position but many (probably most) have one. The reason they’re not listed in the public register is that they’ve been deemed “administratively inactive” by the PTO.
Also – – don’t be so sure about Fleming’s projected hire numbers. Isn’t Kappos already on record as saying hiring freeze will continue into FY2010? If so, expect the BPAI pendency to rapidly approach (probably exceed) 12 months. Not to mention if any of the “patent reform” provisions on post-grant opposition are eventually passed – look for the PTO (specifically the Board) to implode.
“its image as a group of rubber-stamping 3rd tier engineering majors” …
That’s cold and false. Who are the pencil-necked whiz kids that you may have in mind who could do better job at examining? I’m curious (not the poster).
Did I use quotation marks when I referred to the directive using the sockpuppets’ hero’s favorite pejorative? Yes, I did. I thought so.
So I wonder what the sockpuppet is talking about?
I’ve never denied that the PTO was trying to clean up its image as a group of rubber-stamping 3rd tier engineering majors who’d issue anything as long as it was “computer implemented” and filed by an applicant who could breathe throught his/her mouth. My position is that the PTO isn’t doing a very good job of cleaning up that image.
But hey, it’s not getting any help from its customers, that is for sure, at least judging by the whiners who infest the patent blogs.
“When the directive was issued…”
Examiner Mooney, thanks for acknowledging that such a directive was issued. Director Kappos already did acknowledge it, so you’re a little late to the party, but welcome!!!!!
Your previous denials of this directive are just that much funnier given your better-late-than-never admission of about 7 minutes ago.
” I contend that frequently the answer is that the Examiner is not persuadable.”
I assume you are not contending that there are Examiners who simply refuse to allow any cases, no matter what. I’d like you to name one, if so.
And if not, then why would anyone expect Examiner’s to be persuadable on every issue? It is the Examiner’s job to be UN-persuadable when the claims are craap and the applicant is mouthing inanity.
Shall we take a random peek at, say, ten applications published this week in the “web-based application” field and look at the claims? What are the odds of finding a claim in those ten applications that is fit for the dump?
The only problem with the “reject reject recect = quality” directive is that the PTO doesn’t have enough intelligent and creative Examiners and panel members to follow through. When the directive was issued, the PTO didn’t realize the extent to which applicants were invested in the patent bubble (“pay to play”) lifestyle. It’s better to have an application with fat claims sitting on appeal for three years than to expressly abandon it. So that’s where they sit.
Of course I’m assuming that the applicant was not persuasive. If they were persuasive then the rejection would be withdrawn, thus the appeal never takes place.
I don’t know what question is supposedly being begged though.
Maybe I should restate what I said originally:
If they can’t be bothered to be persuasive then yes it is fair, at least so far as I can see.
Taz, ask 6 how he feels about being turned back during the appeals process (this has brought 6 to expletives on previous threads).
Better yet, let’s have Ron Katznelson refresh the stats on the abysmal examiner performance during the appeals process.
I’m curious if the outrageous stat line under discussion is the “favorable” cherry-picked stats as opposed to the actual under-reported ones that Ron has shared with us in the past (hint: the situation is FAR FAR worse than the Office leads on).
If they can’t be persuasive?
That begs the question. You are assuming the answer (the applicant was not persuasive). I contend that frequently the answer is that the Examiner is not persuadable.
“Well, Hecky’s, I understand that you get bored, but is it really fair to inventors to make them spend a bunch of money and three more years to get their patent?”
If they can’t be persuasive? Seems like a yes to me.
“Frankly, I wish more applicants would appeal rather than argue the same thing over and over. As an Examiner, I would rather make new arguments than rehash the same ones. ”
Well, Hecky’s, I understand that you get bored, but is it really fair to inventors to make them spend a bunch of money and three more years to get their patent? Appeals should be rare, not routine.
We appeal appeal appeal primarily because of two common problems.
One, “broadest reasonable interpretation” is unhinged from the specification and isn’t reasonable. The typical dialog goes like this. The examiner says Y=X; the applicant says no and cites evidence such as Y isn’t amongst the examples of X in the spec and various techincal dictionaries don’t equate the two; the examiner counters on final that X was not specifically defined in the spec so Y is not inconsistent with the spec; notice of appeal.
Two, there’s no thought going into 103 rejections. For example, one gets an OA that says it’s obvious to include X from ref A into the system of ref B; the applicant provides reasons why one wouldn’t include X; the examiner hauls out the form paragraph about bodily incorporation; notice of appeal. The OA specifically said it would be obvious to bodily incorporate – that’s what “include X from ref A into the system of ref B” means. If the examiner had something else in mind other than bodily incorporation, what might that be? And there’s typically no indication about how/where the allegedly obvious modification will be made.
I’d like to approach with the three prongs, but I would probably use a lot of voltage on each prong if I did.
I completely agree with John Darling’s first post. I will never “buy” an unnecessary RCE unless a client insists in doing so. Appeal appeal appeal!
Comparing to the FY2010 projection on slide 4, it appears that slide 10 suggests that hiring 21 more APJs (a 26% increase) and 29 more patent attorneys (a 94% increase) over the next nine months will allow the BPAI to reduce the projected end-of-year inventory of pending appeals from 21,500 to 14,156. In other words, the presentation suggests that the new hires in FY2010 will allow the BPAI to decide 14,344 cases in FY2010 rather than a mere 7,000. This does not seem realistic to me.
How does hiring 45% more people allow a greater than 100% increase in decisions that same year? The other projections in slide 10 seem similarly odd. What am I missing? (I am sure it is something.)
good posting, patentdaddy
I absolutely concur with JohnDarling above. Quality of examinations, IMHO, is based on the art unit. Certain art units (e.g., telecom) have atrocious examinations. Other art units (e.g., laser physics and synthetic aperature radar) have very bright examiners who do their jobs and take pride in their work. I find that certain Examiners are likely to work with you if you give an RCE to get that extra point – even though their initial examination was lousy. If I get the lousy examination coupled with an obstinate examiner, then I don’t even bother after that first RCE. I go straight to appeal. I have filed about 10 appeals this year alone, when in the past I probably filed one every two years. Why keep pounding away via RCEs and responses when the Examiner is not going to budge anyway?
On page 11 of the linked presentation, the slideshow lists several of the judges and patent attorneys currently working for the BPAI. My question is, why doesn’t the Office of Employment and Discipline have records for all of the patent attorneys working for the BPAI? Are they really all patent attorneys?
“What ever happened to NTP’s appeals before the BPAI?”
Still pending. See 90/007,735.
My experience is that the quickest way to allowance is to not file claims that are unreasonably broad or just plain sh*tty. Then again, clients sometimes wish to file broad or sh*tty claims for reasons that have little to do with legal considerations and everything to do with “strategic” or commercial considerations.
Nobody disputes this but for whatever reason people really hate to talk about it.
JD “The increase in appeals was a direct result of the implementation of the “quality=reject, reject, reject” directive given to the examining corps.”
That directive was essential to save the USPTO’s face with respect to the flood of garbage claims being issued at the height of the bubble. The problem with building the damn was that the PTO underestimated the extent to which businesses had become addicted to filing crap, much as the Fed had underestimated the extent to which the larger economy had become choked in worthless paper.
As noted above, the solution is to higher more people to process the appeals. The worst possible response to the backlog would be to simply issue the garbage because a bunch of prosecutors, trolls, and other business people are throwing a teabagger-esque temper tantrum
What ever happened to NTP’s appeals before the BPAI?
I welcome the BPAI’s expanding review.
In an appealed case you have the examiner advocating for the public (“reject, reject, reject”), the attorney advocating for the applicant (“allow, allow, allow”), and the BPAI choosing the winner. This creates a sort of quasi inter partes proceeding that should reach better results than the examiner acting alone.
4) blame it all on jackal-headed lawyers and patent trolls lurking in the Duke Street pedestrian tunnel – not on the list.
That’s a step in the right direction from the previous regime.
As JD said, “The increase in appeals was a direct result of the implementation of the “quality=reject, reject, reject” directive given to the examining corps.”
hire more BPAI judge, as we have been saying on this website.
“I disagree. The increase in appeals was a direct result of the implementation of the ‘quality=reject, reject, reject’ directive given to the examining corps.”
This policy is still visible in nearly every Office action, and especially in virtually every first action. All the PTO has done with this policy is effectively double the cost of applying for a patent and the pendency of application.
” The office currently has a three-prong approach to fixing the situation: (1) hiring more BPAI judges; (2) hiring more patent attorneys who essentially serve as law clerks, drafting opinions that are eventually approved by the Board; and (3) improving BPAI efficiency.”
RE:(1) and (2)- How will the PTO come up with the money for these solutions? Isn’t the PTO already complaining about not enough funding?
RE: (3)- has the PTO ever increased efficiency w/out compromising quality (e.g. “reject, reject, reject” policy)?
Frankly, I wish more applicants would appeal rather than argue the same thing over and over. As an Examiner, I would rather make new arguments than rehash the same ones. I understand that there are strategic reasons for delaying appeal in some circumstances, but in my experience I have seen a *lot* of cases argued to death when it is clear the office and the applicant are taking opposing positions with little or no middle ground.
Bottom line: if you disagree and you are sure you are right, take it to the Board
“The swing was largely triggered by the prospect of rules limiting the filings of requests for continued examination (RCEs).”
We’ve been filing more appeals because the repeated RCE route was a waste of time. Forcing the examiners to make a good rejection at the start (rather than enabling them with token amendments and RCEs) is a better strategy.
“The swing was largely triggered by the prospect of rules limiting the filings of requests for continued examination (RCEs).”
I disagree. The increase in appeals was a direct result of the implementation of the “quality=reject, reject, reject” directive given to the examining corps.
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