- Global Dossier has now been released (November 2015).
- USPTO Collected over $3 billion in user fees in FY2015. That figure was below budget. Spending limit is around $3.5 billion, but is limited by revenue. As a benchmark, in FY2010 USPTO collected $2.1 billion in revenue.
- USPTO is proposing increase in fees
- Ex parte prosecution: filing fee up $120 (filing+search+exam) to $1,720; Independent claims (more than three) up $40 to $460; RCE up $300 to $1,500 or $2,000 for 2nd+ RCE; late IDS – $300 after First Action; $600 after Notice of Allowance; Notice of Appeal – up $200 to $1,000; Appeal – up $500 to $2,500; However, no proposed increase in maintenance fees or extension-of-time fees.
- Post Grant: Inter partes review up $7,500 to $30,500 (request + institution fee); Decrease in fee – reduced fee for reexaminations with <45 pages.
- Median first action pendency is now 17-months.
- Design patent filings continue to steadily rise – as does the backlog of unexamined design patent applications.
- USPTO Ex Parte Appeals Backlog Continues to Decline – down to 21,000 pending appeals.
Dennis,
The PTO’s CFO’s slides presented at the last PPAC are sparse on explanation, but your point 2 may give the wrong impression. The $3.5 billion was never contemplated in a budget. The $3 billion was only 0.1% below budget. To put things in further perspective, the US GDP was about $15 trillion in 2010 and $18 trillion in 2015, a 20% increase. In roughly the same time, filed applications increased from about 500k to 600k, a 20% increase. Fees collected increased from your $2.1 billion benchmark to $3 billion, a 43% increase due to increased fees for everything except micro entities.
Troubled,
You are not quite correct. From link to uspto.gov :
“For FY 2016, the USPTO requests the authority to spend fee collections of $3,207 million, which along with $28 million from other income and $266 million from the Operating Reserve balance will fund operating requirements of $3,501 million and 13,314 full-time equivalents (FTE).”
Look closely at the bold items (my emphasis).
Further, comparing this to GDP is a fallacy. There is no basis for such a comparison (when choosing to normalize anything, arbitrary numbers chosen as norming factors only produce noise). The “perspective” you want to use is flawed. …wrong impression…
One part here to remember is that the entire BILLION dollars amount is innovator funded.
Even your own numbers point out a problem. You attempt to use a percentage increase in filings without taking into account the non-static costs associated with those selfsame filings. …wrong impression…
All in all, and as I have posted repeatedly on discussions of the Office’s ability (through the AIA) to set fees, that power is limited by fee setting to arrive at an end-game “wash.” As the Prof indicates: there must be balance in the aggregate. ALL fees (and fee setting apparatuses) must be calculated (and re-calculated, if need be – and apparently, this need is very much evident). There has to be scrutiny – and accountability – with the fees. Noting the proper level of shortfall is only a first step.
Which brings us to point 3: any increase in fees in one area must be accompanied by a meaningful analysis and some planned drop elsewhere (given a fixed and steady budget aim), or an overall increase in budget.
[innocuous paragraph trips filter]
The word, not so ironically, for this exercise “of the books,” is accounting – with the same root word of what else is sorely missing: accountability.
These “business” concepts run together, and I would be remiss if I did not recall the words of my Uncle Ben concerning the “gift” of great power given to the Office with such limited fee setting authority. Responsibility, unchecked and unaccounted for is a true tragedy. For innovators. For the Office. For this country.
Anon,
With all the gloom and doom about patents on this blog and the increase in fees, one might have expected a falloff in applications instead of the 20% increase over the period. This is not the case because either: 1) there is a sucker born every minute, or 2) hope springs eternal, or 3) patents are worth investing in.
Lacking survey evidence, what is the explanation for the increase. GDP is a measure of economic activity. Since this also increased by 20%, to me, it looks like business as usual.
Two quibbles: Applications of foreign origin have accounted for very close to 50% over the time period,so maybe world GDP should be used of which the US share is about 28%. However, domestic applications still increased about 20% and the US share is higher because of home court convenience.
Maybe, filing rates should be compared to R&D spending. Up to date numbers are harder to get. R&D took a hit after the last recession, but current trends are in line with recent increases in filings. Ir may be that people making R&D funding decisions intend to rely more on trade secrets than patents. I doubt it, but one would have to ask.
I don’t understand your comment at 3.1.1.1, but lacking good survey information, don’t think it is worth beating to death.
Anon,
The impression I had was that the Office expected $3.5 billion in collected fees in FY 2015 and there was a $0.5 billion shortfall. It looked like the bottom had fallen out. But the shortfall was actually quite small. Your post indicates that for FY2016, fees are expected to increase to $3.2 billion from $3 billion. (Using reserves allows spending of $3.5 billion.)
Read again Troubled – you are stopping short of the total budgeted amount.
Detailed data was presented on design patent filings but no data was presented on utility filings for August through October. This data was presented at the prior PPAC meeting. I wonder why.
That’s good news – but consider what has been done to achieve this progress:
1) The PTAB has tripled its size and quadrupled its the annual output of ex-parte opinions, as compared with 2009.
2) The pre-appeal program is more popular than ever – and a large percentage of appeals are resolved before reaching the board.
3) The PTAB has quelled dissent among its ranks, compelling its judges not to issue dissenting opinions.
4) Most importantly, the USPTO has hiked appeal fees at a tremendous level: from doubled appeal fees: from $1,080 in 2012 $2,800 today, and with a proposal to hike it to $3,500.
And despite these tremendous efforts – the appeal rate is not dropping all that fast… because demand for ex-parte appeals is higher than ever.
Why are appeals being filed so often – even if they are much more expensive? and And why isn’t the USPTO trying to reduce the demand for appeals, by coercing examiners to issue more compelling prosecution? Why is it, instead, proposing to price it out of reach of many applicants?
A. it’s in demand more than ever for the same ol reasons just with more examiners and new spes.
B. You do know that you can write a “compelling” response that makes sense to everyday examiners and have prosecution reopened correct?
Nope. I normalized the data over the total number of cases and office actions. Still shows an enormous upswing in the rate of appeal per case.
Nope, you’re looking at this from the wrong side.
Appeals are the applicant’s conclusion that the examiner’s conclusion is objectively unreasonable and legally unsubstantiated – and that the applicant can’t make any further progress with the examiner.
Examiners don’t have the option of appealing applicants’ decisions. Why? Because they bear the burden of making the prima facie case. Even if the applicant’s position is unreasonable, the examiner must still meet legal obligations and assert an objectively reasonable position. And if they don’t, they get appealed.
And ex-parte appeals are happening a lot. They’re happening a lot more than they were in 2005. They’re happening so much that even after quadrupling the output of the PTAB and tripling the appeal fees, the USPTO can barely reduce the appeal backlog.
^^^ David, part and parcel of my long ongoing ‘mantra.’
We – the royal we – really do need to put the focus on quality examination.
anon, I couldn’t agree more.
My experience:
First, I agree it is unfortunate that appeals are required in seemingly so many cases.
Yes, there are unreasonable examiners. It’s unfortunate, and often an appeal is necessary. But pre-appeals go a long way in resolving those most-unreasonable cases. I have had prosecution reopened in 8/10 pre-appeals I have filed.
Most appeals I’ve seen are not due to strong arguments on either side. They result in neither side putting forth compelling arguments.
As an examiner now, I have about 1 appeal filed a year, and only about 1/2 of those make it to appeal, because Applicant reopens the other half through RCE instead of proceeding to the board.
Just thoughts, take them for what you will.
One case appealed per year seems entirely reasonable – and consistent with the purpose of having an appeal board: to resolve close questions and genuine disputes, like “the reference can reasonably be read two different ways.”
But the PTAB is receiving about 9,000 appeal brief per year. Now, that’s briefs forwarded to the PTAB per year – and according to both top-level metrics and the comments in this thread, 75% of filed appeals get resolved before or during briefing. So that’s actually 36,000 notices of appeal filed per year.
The USPTO has just under 9,000 examiners. So that’s four notices of appeal filed per examiner, per year.
Next, factor out people like SPEs, who don’t actually examine their own cases. And, to an extent, factor out junior examiners who (a) don’t examine that many cases, and (b) don’t really have the experience to make sound decisions, and so defer to their primaries. That raises the number of notices per year by the other examiners. So it’s more like five or six notices of appeal filed per examiner, per year.
Next, factor out examiners like you, Pat Age, whose diligent work leads to a much lower appeal rate – for every one of you, there’s an examiner out there who’s racking up ten or twelve notices of appeal per year.
It’s now clear why the PTAB can’t work through its backlog, even after quadrupling its output!
And the real question is: Why is the USPTO trying to constrain this problem by raising rates… rather than tackling it at its source: working to improve examination to reduce the appeal rates?
Yeah even if your analysis is true, how many of those examiners with 10 appeals a year are in the softiewaftie arts or business methods?
I mean, that right there might just be the answer you’re looking for.
Pat Age,
As someone from the outside, it seems to me that the problem, if I may call it that, is with new examiners, usually fresh out of school (therefore lacking confidence). They appear to be very fearful of allowing an application in error. Rather than risk it, they do everything possible to find a reason for rejection. My guess is that the penalties for an abandoned application are non-existent. Even losing an appeal isn’t something to fear all that much.
Caught between two sticks with no carrots, for the new examiner, it is a question of which is bigger. Could you straighten me out?
You may be, unfortunately, correct. Younger examiners have limited perspective of the whole IP picture, and are more likely to focus on rejection (though I’ve also seen plenty of great new examiners).
There are no penalties for an abandonment “forced” on applicant through an examiner’s incompetence. Also, if an examiner is reversed on appeal, it is almost always immediately allowed (even though a thorough examination has most likely NOT taken place). Few SPEs or Primaries will challenge the PTAB determination, so examiners are unlikely to be punished for allowing something with the PTAB’s “blessing.”
I came to the office with a few good years of prosecution experience. I came to the office by choice, for the better lifestyle. I understand prosecution from both sides, and try to be reasonable.
But, younger examiners, or those at the PTO because they have no other options, may get into the “churn out crap and deal with it later” rut. My only advice? Interview early in the case, and if you think the examiner is a dud, get it in front of his SPE or the pre-appeal panel sooner rather than later.
Pat Age,
Thanks for your observations. Unfortunately, not much more can be said.
Pat Age,
I applaud your contributions, and look forward to your views on other topics.
I agree. Thank you, Pat Age.
That’s the message I have taken away from years of prosecution.
As the others expressed – thanks for your contributions; I’ll look forward to your participation.
“Most appeals I’ve seen are not due to strong arguments on either side. They result in neither side putting forth compelling arguments.”
That is correct Pat.
Though frankly I find that the root cause of most of this is “arguments” happening in the first place. If there is a competent person on hand to do an “analysis” of the “fact findings” then usually that is sufficient, no “arguments” as folks usually tend to make are technically required. All that is generally required is for anyone involved with the prosecution to display a mastery of what they’re doing and all will go well.
6,
you are the epitome of the small mind in item 6 (go figure):
link to paradoxicalcommandments.com
“Appeals are the applicant’s conclusion that the examiner’s conclusion is objectively unreasonable and legally unsubstantiated – and that the applicant can’t make any further progress with the examiner.”
Right, so the applicant needs to learn to write persuasively. To examiners. Or have his attorney do it. Not write persuasively to APJs. Not to the Fed Circ judges. To examiners.
Either you know how to do it or you don’t.
“And if they don’t, they get appealed.”
Meh, I’ve won more than I’ve lost.
“And ex-parte appeals are happening a lot. ”
Yeah, a suuuuuuper lot. I had like one in the last 2 years. And overall it’s still a pretty small number across the corps.
Look you can normalize data all you want, it isn’t going to change that the bureaucracy is constantly getting larger and is as large as it ever has been. It’s pretty plainly that enlargening that is, generally speaking, causing the issue.
Though yes, this spills down into a hundred different smaller substantive types of issues. Including, for instance, people not even knowing what an objectively reasonable position is. For instance, I’ve been bouncing around the bureau this last little bit, and the number of people I’ve met that just “do what they want” (a la arbitrary and capricious style) is gigantic. Many of those same folks literally scoff at the notion of an “objectively reasonable” position. They think, in their mind brains, that whatever is subjectively reasonable is what should be triumphant. And this is because whoever taught them was remiss in informing them otherwise, or in other words, the expansion of the bureau.
As we say in the sciences: “The plural of ‘anecdote’ is not data.”
Here’s some actual data:
* Examiners lose 75% of appeals at the pre-appeal stage.
* Examiners lose 80% of appeals before reaching the Board.
* Of those 20% of cases that reach the Board, 31% result in an examiner reversal, and 13% result in a reversal-in-part.
As I noted below, the metrics show that it’s about five or six notices of appeal per examiner per year.
You don’t consider it a big number because it costs you almost nothing, because the PTO doesn’t penalize examiners when they lose.
It costs applicants a ton to fix examiners’ mistakes. And if that doesn’t interest or bother you, well…
“* Examiners lose 75% of appeals at the pre-appeal stage.”
Yes I’ve heard that time and again. But a lot of that is just people doing whatever the f they please (primaries esp, though esp also new spes that have not had that primary mindset beaten out yet) and having someone actually find facts and eval it on the merits for the first time at the pre-appeal. And another big bit of it is people just straight up ignoring limitations through interpretating. That sht goes on so much these days.
Of course if your reply or interview gets them to go ahead and tell you that they’re just doing whatever the f they want, then you can cite the APA and get a new non-f. And if your reply or interview gets them to tell you that x term doesn’t mean anything through interpretating and you then cite a hundred board decisions and a few fed circ decisions condemning that practice then hey, new non-f.
So like I said, learn to write for examiners. Learn what nonsense is the order of the day, and teach them in that specific category. Whether it be to find facts, interpretate, etc. etc. it’s up to you to get the message through to them.
6, this is exactly what I’ve been seeing – for years now. This is the first time I’ve ever seen you acknowledge that the office has problems.
Your entire shtick is about bad applicants and practitioners, but those people are being penalized by rule changes like tightening 101 and 112. The PTO is doing nothing at all about examiners who act in the ways that you acknowledge above. Why are you not equally concerned about the toll they’re imposing on the patent system?
6, an examiner who is bad enough to engage in the behaviors described above is also not concerned about the portions of CFR /MPEP about proper finality of office actions. You can argue ’til you’re blue in the face about how you traversed their reference – they will. not. budge. Meanwhile, you’re wasting your own time, and possibly racking up extension fees, while the clock ticks away on your reply deadline.
Sure, you can call the SPE. Many of them won’t care. And if their examiner is a primary, almost none of them will do anything about it.
6, for the worst 25% of examiners, their process of reviewing non-final office actions is this:
* Did the applicant make any amendments at all? – even inserting a space or a comma? Whatever they want to do with the case, the next office action is final.
* Did the applicant make no amendments? Okay, take this office action:
And twiddle it into this office action:
They don’t even read the arguments, 6. It’s a copy-and-paste exercise.
You can’t “write for” these people; you can’t “get your message through.” You need to resort to the appeal process. This is why there’s a 75% win rate at pre-appeal, and the PTAB is swamped.
Are you starting to understand our reality now?
“This is the first time I’ve ever seen you acknowledge that the office has problems.”
I’ve been talking about those exact issues for at least the last year. Where you been bro?
“Your entire shtick is about bad applicants and practitioners”
I’m not saying they’re “bad”. Maybe a little spoiled, and not very persuasive.
“The PTO is doing nothing at all about examiners who act in the ways that you acknowledge above. ”
I agree. I had presumed that this was age-old behavior from the time before Zurko (and whatever that decision was that addressed interpreting limitations out of the claim) that just hasn’t died out. It’s something for you guys to start btching to the under sec about.
“Why are you not equally concerned about the toll they’re imposing on the patent system?”
Trust me. I am. More than you are perhaps. They take a toll on me even. But I have limited power brosef. Install me as IP Czar. 🙂
“they will. not. budge.”
You have to know how to talk their language brosef. It’s possible. As I’ve told you guys a million times, with such a person the task before you is for you to get them to talk themselves out of doing whatever was done. Spoiler alert. You don’t do this through argumentation and being argumentative. That just leads to the whole “not budging” thing. You can’t give them the opportunity to “not budge”. You must never reach the end point for them, as in, where they “won’t budge”, they must reach it themselves, under your careful guidance, and never have a chance to “not budge” as the goal is to not have them ever arrive at the position to “not budge” from. If you mess this up, forget the whole endeavor, or at the least, ask them to start again from the beginning and then try again.
Every time you run up against someone who “will not budge” know that I’m out here getting those same people to budge.
“They don’t even read the arguments, 6.”
I wouldn’t bet the farm on that.
“You can’t “write for” these people”
Somewhat true. That’s why Alexander invented yonder telephone.
“Are you starting to understand our reality now?”
I’ve understood it for quite a few years now brosef. I also understand the powerful forces arrayed against getting what you want done, done. Apathy, lack of leadership, lack of reward, lack of enthusiasm (aka laziness), lack of understanding, pi s s poor training in the basics, arbitrary and capricious decisions, the list just on and on. But my understanding these things doesn’t mean that everyone does. It’s up to you, and everyone, to spread the gospel.
Trust me, I know.
Even better than calling: in-person interviews. Too often, examiners in telephone interviews don’t seem to be paying attention – their attention is on Facebook or Minesweeper, and they’re only nominally present in the interview so they can say they permitted the interview.
Quite literally, I moved to DC for the primary purpose of interviewing examiners in person at the USPTO. It’s made a world of difference.
Yes, I’m trying.
Yeah that’s good as well.
And yes, your article is correct as well. Though I don’t like you re-purposing the “rejection” nomenclature the way you do in the article. I’m all for there being more transparency (and in fact, if the office were truly committed thereto, then they should just be up front about all those “different types” of rejection in the action itself). Still, there are a hole types (see anon) who would just blow a fuse at actually being informed of what happened internally because they don’t grasp reality all that well.
Life happens at the office just like it does other places, as your page suggests.
“Still, there are a hole types (see anon) who would just blow a fuse at actually being informed of what happened internally because they don’t grasp reality all that well.”
6 – you are being your usual arse here – time after time after time her you are shown to be deficient or just plain wrong, and yet you hew to the same tired C R P of blame the applicant or accuse software and business methods as the source of your )the Royal Your) malfeasance.
Your attempted “slam” of me makes ZERO sense.
Whatever “version” of reality you think that you have been siding on the right side “for the last year,” your own immediate posts show just how WACK you remain.
DS: I moved to DC for the primary purpose of interviewing examiners in person at the USPTO.
And off the record.
^^^ please feel free to (yet again) ig nore the reality – and not just in patent law – that negotiations are typically deemed inadmissable as evidence, because, well, because you need to find a job in which you can believe in the work product produced.
“As I noted below, the metrics show that it’s about five or six notices of appeal per examiner per year.”
That doesn’t sound right. I don’t know even a single examiner that has that many appeals. Anectdotes not being data is fine, but your numbers sound just plain bonked bro. Maybe you’re not that great at statistics. Maaaaaybe if you are including the non-statutory “pre-appeals” in your “NOA” number.
6, the metrics we’re discussing are the rate with which applicants need to invoke the appeal process – including its $1,300 (soon to be $1,500) price tag – to resolve examiner errors. Of course that includes the pre-appeal conference: you can’t get into that program without filing the notice and paying the fee.
Look, I’ll lay it out for you again. If you see an error, say so.
* The PTAB reports that it receives over 9,000 cases per year. The 2015 metric is 9,585.
* 80% of cases that start with an appeal get resolved before the briefs are actually forwarded to the PTAB. So if that process ends with 9,000, then it starts with 45,000 notices of appeal filed per year.
* The office currently has just under 9,000 examiners, but they’re not all equivalent. Roughly factoring out the top-end examiners (SPEs who don’t examine) and the bottom-end examiners (trainees, and junior examiners who have very limited dockets and no decision-making authority), let’s say it’s 8,000 examiners.
* 45,000 notices of appeal / 8,000 examiners = 5.6 average notices of appeal per examiner per year.
Your turn.
Yea I saw you do this further down the thread. Here I looked up the actual data for you:
link to uspto.gov
The last line of that shows you what you want to know. For FY 2015, they had 4.5k ex parte appeals received for patent apps. 5.6k decided in the same year. The 9k number you cited is all the cases they get of all kinds.
So basically chop all your numbers in half. 2.5 avg NOAs a year.
Actually that’s my bad. That is only half the year. So yeah. Idk why your numbers are so high. But nobody I know has that many appeals that I know of. And I know a lot of people. I still think the softiewafties and business methods are probably skewing things.
“It costs applicants a ton to fix examiners’ mistakes”
Brosef I know. But I cannot fix the entirety of the office by my lonesome, and neither can you. We can all only play our own small part. Which on my side means advocating for the law internally as best I can get away with. And for you means writing replies that get your prosecutions reopened while teaching the examiner something in the process. You can also keep writing about the topic to spread the gospel, but other than that there isn’t much to be done. If you don’t like your role here, I’m so sorry bro. There is no magical panacea.
Even if you managed to get me installed as undersec tomorrow even I could not turn the whole bureau around in a single term. There’s too much opportunity to “do as you please” (arbitrary and cap decisions) and too much of an overall culture of rejecting things whatever means must be utilized, and a culture of having normalized those means to reject things even when the statute doesn’t specifically mandate. Also, I would have to go through POPA to get the clear error standard changed to reign in idiots, and I’d need a whole corps of mgmt that could enforce such, and do such responsibly without abusing the new standard. And changing the clear error standard is the wrong thing to do anyway, the system requires it to be where it is to not stifle examination actually being accomplished on a day to day basis with confidence (you cannot have people examining in fear and think they’ll make production).
In short, it is unpossible, in my estimation, as the bureau is too large. If we still only had 2000, maybe 3000 examiners, the undersec and the few other amazing people at facts and law could work things out with individuals enough to where change could be made. Now there’s to much area to “hide” in the bureau and too many old school ways of doing things that fly under the radar.
And also set aside the fact that the tech keeps on getting more advanced every year, with people forever thinking that applicants are *intentionally* claiming decades old tech out of the gate.
And one of my responses is caught in the filter. But bottom line is it says sure I care, but there isn’t anything I can do about it more than I already am so I’m not worrying about it.
6,
When you seek to just dismiss the normalization and then say something plainly not in line with that selfsame normalization, you only show that you don’t understand what you are talking about.
6 said:
> B. You do know that you can write a “compelling” response that makes sense to everyday examiners and have prosecution reopened correct?
Tell us about how you handled “compelling” responses in the SAWS cases you rejected.
BTW, what do they call SAWS nowadays? You can tell us. We’re all “friends” here.
NOiP,
They call them the same things they called them before.
I am sure that you remember that the Office point blank admitted that SAWS was but one of (some unknown) number of similar Star Chamber like “programs”….
(and yes, we still need that sunlight in the Office dealings)
“Tell us about how you handled “compelling” responses in the SAWS cases you rejected.”
Brosef I never had a “saws” case.
David, on the cost of appeals, I would suggest they are trying to cut down on the frivolous.
I think the Federal Circuit has the same problem — it is forced to hear a lot of low value, poorly written, poorly argued, junk appeals from the sundry administrative agencies over which it has jurisdiction. It is amazing that they can even stay awake during oral argument. Some of those advocates drone on and on when the court is clearly exasperated.
Completely aside from any discussion of ‘best practices,’ are you not being just a tad “elitist” there, Ned?
Is not the opportunity to be heard (and enforce, even with ‘poor’ execution) still part and parcel of rights to be protected?
So, your droning on and on and on about 35 USC 112 and functional claiming is OK, but other people’s droning about something else (which might actually matter and have a legal basis) is bad? Have you ever heard of the concept that you see in others what you deny seeing in yourself?
PatentBob, have you become a second anon?
“David, on the cost of appeals, I would suggest they are trying to cut down on the frivolous.”
In 75% of the cases in which a pre-appeal request for review and/or an appeal brief are filed, prosecution is re-opened (i.e. the PTO acknowledges the rejections have no merit and should not proceed to the PTAB). Who’s being frivolous?
I agree with this. My personal experience is more like 80% are reopened. The ridiculous part is that you pay the appeal fee anyway. I think the appeal fee should be either (1) conditional, and only charged if the case is sent on to the Board, or (2) not required until you file the actual appeal brief, not the pre-appeal brief request.
You obviously don’t understand the nature of the “pre-appeal” “program”. Pre-appeals are not even statutorily authorized.
The pre-appeal program still costs applicants $1,300 today, and will cost $1,500 under the PTO’s proposal for cost increases.
The pre-appeal review panel – the examiner, the examiner’s SPE, and a third examiner – only reviews the applicant’s arguments. And if the applicant manages to convince both of the other examiners that the examiner’s position is deficient, prosecution gets reopened.
The applicant doesn’t get refunded the fee, nor the practitioner costs of the pre-appeal brief. The delay can’t be rolled back. It’s all just wasted expense, for the purpose of reviewing arguments that were already presented to and rejected by the examiner.
And there is no penalty to the examiner if the applicant wins at this stage. Which is why it happens much more often than necessary – and why applicants win at the pre-appeal stage 75% of the time.
6, you keep pushing the responsibility back to the applicant. But, again, 75% of the time, the applicant is correct – as determined by the examiner’s SPE and a third examiner.
75%.
That’s a big metric, and it belies your position.
I’ve had nothing but rubber stamped “Go See the Board” on every pre-appeal request I’ve ever submitted and someone once observed that if two of the three panelists have already said “no” it shouldn’t be surprising to not have prosecution reopened. How do you square your 75% with this: link to ipwatchdog.com which suggests like 60% of such requests are merely passed on up the line.
“:I’ve had nothing but rubber stamped “Go See the Board” on every pre-appeal request I’ve ever submitted”
You’re pretty bad then bro. Winning a pre-appeal is cake.
znutar,
My rate is well above 85%.
(and that is with a healthy dose of applications acquired through acquisitions that I simply get to pick up the prosecution on)
anon, I can always get a patent, but the client calls a halt if the claims become too narrow or the expense becomes too great. There is always a trade-off.
I rarely appeal if the disagreement is a matter of opinion. I have, though, appealed when we have had a legal dispute about whether something was prior art.
Reexaminations are always tough because the patents normally are in litigation. An appeal is the worst of all alternatives.
Ned,
It is not – and never has been – about “getting a patent.”
It is – and always has been – about getting a valuable asset.
It is – and always has been – about getting a valuable asset.
Value is subjective.
That’s where the “trade-off” comes in, as Ned noted.
Please try again and note that I am not discussing any such “trade-off” point.
You know – like stay on the point that I actually put on the table, and not some strawman…
“And if the applicant manages to convince both of the other examiners that the examiner’s position is deficient, prosecution gets reopened.”
Technically speaking you usually only need to persuade the appeals guy that the rejections aren’t good enough to send to the board in their present state (as in, the office couldn’t reopen and have a much better position). It’s a lot lower of a standard. And the appeals guy has nothing invested in not reopening.
And what the spe thinks is generally relegated to meh. If the spe was persuaded then they’d just reopen on their own authority. No need for conference.
AAA JJ, The bulk of the fee is paid only if the examiner actually files a reply brief. So bulk of the fee is related to appeals the PTO, as opposed to one examiner, feels lack merit.
Ned, that’s true, but it’s still a costly process:
* The Notice of Appeal costs $800 (with small-entity discounts). The PTO wants to raise it to $1,500.
* The Appeal Brief must be prepared carefully and thoroughly (lest a four-year appeal result in a poor decision just because it wasn’t briefed well), and requires considerable time to map the claims to the specification. It’s a costly and time-consuming process that costs applicants money. So, to a lesser extent, do the Pre-Appeal Request for Review, and the Reply to the Examiner’s Answer.
* The loss of time can be pretty extreme. The PTAB does not publish metrics about its average turnaround time, but the resolution of an appeal can take four years or more. Whether or not that time is recovered through patent term adjustment, it’s still a major delay in the issuance of the patent.
Now consider this: Weigh all of those costs to the applicant, vs. the cost to the examiner if the appeal is found to be substantiated (e.g., prosecution is reopened based solely on the applicant’s arguments – i.e., without claim amendments).
Are examiners penalized in any way when they lose an appeal? No – the examiner just shrugs it off and continues examination. Literally, their only loss is their own time in participating in the appeal brief stages (which, given what I’ve seen, is typically very little).
In short, we have a process that allows examiners to dump major costs onto a client – and, if the examiner loses, to walk away from the process without penalty. This is the problem, right here – and the PTO wants to make it go away by raising costs.
“and the PTO wants to make it go away by raising costs.”
Meh, I don’t think that’s why they’re proposing fee increases bro.
6, here’s the recent cost profile of appeal briefs:
Without oral hearing:
Until October 2012: $1,080
October 2012: $1,260
March 2013: $2,800
Proposed cost: $4,000
With oral hearing:
Until October 2012: $2,160
October 2012: $2,520
March 2013: $4,100
Proposed cost: $5,300
What other factor would you propose as the reason for cost increases that have more than doubled in the span of three years?