BPAI Ex Parte Results

by Dennis Crouch

Because of the availability of settlement, percentage win-rate is often given little policy consideration.  Ex parte appeals are no different.  Before reaching a BPAI decision, examiners can “settle” by withdrawing their pending rejection and then either allowing the patent to issue or else prepare a new and different rejection of the pending application.  Patent applicants can also settle cases by abandoning the case or else by filing an amendment and a request for continued examination (RCE). 

The chart above shows percentage win-rate for BPAI appeals in ex parte cases. In an earlier study, I showed that the vast majority of these decisions are on obviousness grounds. Note – I only considered appeals decided on the merits and excluded those remanded or dismissed on other grounds.

32 thoughts on “BPAI Ex Parte Results

  1. 32

    AND .. that is why you can’t have a commissioner in charge of revoking a patent after the patent has been issued. Because you have a situation where a court could find a patent valid and infringed – and then a political run around to pressure the executive department to revoke the patent after the fact. And when stakes are much higher – and the protection of the lifetime appointment of the judicial department is needed the most.

  2. 28

    Asked and answered Ned.

    C’mon, even I can see that the point being stressed by ANC was the factual predicate that the early US system fully embraced business method patents that did not adhere to the MOT test.

    Sometimes your obtuseness is really grating.

  3. 26

    A new crusade, if you have a question ask it. You stated that I did not respond to Prof. Risch's article. I did. If there's something I said there that you would like to talk about, tell me what it is.

  4. 23

    Clearly, the recital of…,?i>”

    Clearly that is just more of the Ned dust kicking, wandering off into something that NO ONE is arguing about (or even remotely interested in arguing about).

    C’mon Ned, don’t run and hide like a little girl. Drag the actual early history of US patenting out into the light and incorporate those patents that were fully thought to be patent eligible material into your historical views.

    You don’t want to be accused of being two-faced, do you? Loving history when it suits your views, and hiding from it when it does not?

    Since I know that you are a man of your word and you have boldly proclaimed that you treat all method patents equally, I know you will plainly acknowledge the actual factual history of patenting in the US.

    As I recall correctly, you got VERY upset at Gene Quinn when Gene flubbed the early history of US patent law. Are you now going to likewise flub the early history of US patent law?

    I am listening, intently, to learn just what it is that you think the early US history might be.

  5. 20

    Big Wink, I am of two minds on the issue of BMs in the abstract. Clearly, the recital of a BM in a patent that defines new technology for implementing the BM should be patentable.

    But what if the technology is old and routine, or what if no technology is recited at all so that one, in the end, is simply manipulating abstract concepts such as price, value, risk, quality, quantity and timeliness?

    I personally do not believe such patents qualify as within the Useful arts. But that ship has sailed in Bilski. The takeaway from Bilski and Prometheus is that methods such as hedging where risk is manipulated have been proscribed, not because they relate to business, but because they manipulate abstract concepts.

    I can live with this.

    So, if I have a BM application to prosecute, I will be sure to tie it into the real world of machines, physical signals, and physical inputs and outputs as much as possible so that what is manipulated are physical things, not concepts.

  6. 19

    Shh, DO you want to disturb Ned’s intent listening?

    Ned? Ned? Well son of a gun, Ned’s asleep at the switch.

  7. 18

    I’m sure you ignore MM, Telling it; just like we all do (well; ‘cept for 6).

    Fact is, you got everything right.

    Dudas was likely the worst thing that’s ever happened to the patent office.

    The ’07-’08 drop?

    Why; that be the Dudas Dip.

  8. 16

    Your numbers are too high. The going rate is more like $600 for patentability and $2k for validity. I think the highest I’ve ever heard of anyone paying for a search was $20k, and it wasn’t even for validity, but for infringement clearance. Most would think spending $4k-6k was ‘scorched earth’.

    However, if the search is done in house by counsel at attorney billing rates, that does multiply the usual cost by a large factor.

    If you have $100k or half a million to drop on a search, I’m sure something can be arranged!

  9. 14

    Your crusade is to abolish software and business method patents.

    Do you really need to have this spelled out?

  10. 13

    BigW, an just what, pray tell, is my crusade? You guys consistently say there is one, but never actually say just what it might be.

    I am listening, intently, to learn just what it is that you think the crusade might be.

  11. 12

    My 500$ patenetability search is probably 90% as effective as a 500k$ search in many types of cases. If I should decide to go above the call of duty it probably gets up to about 95%.

  12. 10

    Many patents are invalid. Do you prosecutors really think that your $2K patentability search is as effective as a $20K or $100K or $500K scorched-earth search?

  13. 9

    Telling, the problem was not entirely the PTOs fault. It was the Federal Circuit who savaged the proper considerations for patentable subject matter when it announced State Street Bank, erected illegal barriers against a determination of obviousness with its exclusive TSM test, and otherwise expanded the scope of what would be considered patentable to ordinary folk far beyond credibility.  The fact that you do not recognize us tells us a lot about you.

    I suspect you have frequently festooned altar to Judge Rich in the vestibule of your luxuriously appointed mega law firm that profited substantially from the Judge Rich era and are looking back to the good times with nostalgia while castigating any who stood, or for that matter, who stand in your way. 

  14. 7

    You seem to forget that some people say patents are invalid — not because they are — but because they want to infringe these patents.


  15. 6

    business method art unit needed more resources — more examiners, better training, more review of final rejections and allowances, improved prior art library

    other art units did not need to be punished

  16. 5

    “The question is answered by determining which does more harm? The invalid patent allowed or the valid patent denied?”
    * Invalid patent allowed — recourse (assuming that the patent is something that is ever asserted) is to file a reexamination (cost you can probably get one done for $5K-$10K if you have good art). Alternatively, there is the courts. Importantly, this recourse can be taken at any time.

    Another thing to consider, an invalid patent allowed is more likely a problem with the best prior art not being found than the best prior art being found and not applied correctly.

    * Valid patent denied — recourse (BPAI, Fed Cir, and SCOTUS). However, as a practical matter, the cost of taking an application to the Federal Circuit and SCOTUS is very prohibitive, particularly when the patent is at the very initial stages.
    The downside is that inventors become disillusioned with the system, and many of them stop taking part of the system. They either stop inventing or hide their inventions from other – none of which promotes progress. The further downside is that Examiner’s/BPAI start believing that the law is something that it is not.

    Another thing to consider, EVERY good patent denied negatively effects the inventor. However, only a rare few patents that were improperly granted ever get asserted and, thus, cause problems to public, in general.

    “Dudas came at at time of revolt by industry plagued by what they perceived to be an avalanche of invalid patents”
    Oh please. There probably wasn’t more than a handful people in the “industry” at the time of this alleged revolt that could identify more than a dozen allegedly “invalid patents.” If patents are blatantly invalid, then they are easily invalidated via reexam at a low cost. If the validity was close (more likely) then anytime you draw a line there are going to be some people that fall on both sides of the line (i.e., some say valid while others say not valid). You seem to forget that some people say patents are invalid — not because they are — but because they want to infringe these patents.

    “What did you really expect from him?”
    Follow the f’n law – not remake it. The USPTO is part of Commerce, which falls under the President (i.e., they are part of the executive branch). Dudas could neither make law nor interpret law.

    I have NO RESPECT for anybody that defends Dudas because Dudas didn’t respect the law.

  17. 4

    Telling, obviouness is a judgment call based on facts, e.g., evidence. TSM tried to make it entirely based on facts, but the SC reminded us that that was error. They reminded us that obviousnees also requires what we know as common sense.

    Now we have had this debate before. The policy question on the table for debate is whether it is better to allow one invalid patent and 10-100 invalid patents or vis-a-versa? The question is answered by determining which does more harm? The invalid patent allowed or the valid patent denied?

    Dudas came at at time of revolt by industry plagued by what they perceived to be an avalanche of invalid patents, especially of the dubious State Street variety. What did you really expect from him?

  18. 3

    As to the difference in reversal rates, it is plain as day that Dudas pressured the BPAI for more rejections (or affirmances of rejections).

    Dudas began on January 12, 2005 and left January 18, 2009.

    link to patentlyo.com

    In his first year, the reversal rate (approx 58%) was very consistent with prior years. However, in years 3 and 4 that number dropped to 40%. People blame KSR, but KSR came out April 26th of that year, which is 6 months into the USPTO’s fiscal year (the numbers presented by Dennis are fiscal year and the fiscal year of the USPTO starts October 1st). This means that half of the FY 2007’s Decisions would have not implemented KSR. However, there is little difference between 2007 (half decided under KSR) and 2008 (all decided under KSR). As such, the evidence does not support the drop in reversal rates being because of KSR.

    Once Dudas left, however, there has been a slow but steady climb in the number of rejections being reversed.

    Whether or not a rejection should be reversed or affirmed should be based upon the law and the facts. However, these numbers show that an agency outside the law (i.e., Dudas) impacted the reversal rates and negatively changed the culture of the USPTO. This is just another piece of evidence that shows how badly Dudas ran the USPTO.

  19. 2

    “Patent applicants can also settle cases by abanding [sic] the case or else by filing an amendment and a request for continued examination (RCE).”
    Theoretically, but in my experience, that happens very, very rarely. Once you get to the Examiner Answer, Appellant has already paid the Appeal Brief fees and paid their attorney for the Appeal Brief. Once that happens, you are committed to the appeal process.

    “In an earlier study, I showed that the vast majority of these decisions are on obviousness grounds.”
    Ehh. A vast majority of rejection include 103 rejections – oftentimes on dependent claims that aren’t been argued. As such, I wouldn’t give it that much thought. Also, there is a difference between an obviousness analysis and the findings of fact (i.e., the Graham inquiry) that underlie the obviousness analysis. One is a conclusion of law (as guided most recently by KSR) and the other involves findings of fact, which is similar to the analysis found in a 102 rejection.

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