The USPTO has started its appeal fast-track program — “Fast-Track Appeals Pilot Program.” The program includes a $400 cut-in-line progrea launches July 2, 2020. The required petition fee for cutting-in-line is $400. There are already a group of cases that are treated “special” for appeals, including reissues, reexaminations, and cases “made special.” But, the USPTO Examination Track-1 cases are not currently treated as special on appeal.
The Patent Act provides a right to appeal to the PTAB once your claims have “been twice rejected” and you have “paid the fee.” 35 U.S.C. 134(a). The fee structure is a bit unusual. It costs $800 to file a notice-of-appeal at which point briefing begins. Quite often examiners withdraw their rejections after seeing the patent applicant’s brief. Once the briefing is complete the case is ready to be “forwarded” to the Board — which requires $2,240. [Current Fees] There is also a $1300 fee if you want an oral hearing rather than having the PTAB decide your case on the briefs.
This is a good move from the PTO. A modest fee for a modest timing improvement. The current pilot is limited to 125 per quarter for the next year. 500 total before a reevaluation.
Modest timing improvement. The petition can be filed only after the case has been forwarded to the PTAB and the applicant has received an appeal docket number. From that point, the current PTO timeline is about 14-15 months for an ex parte appeal. The office is expecting that an expedited appeal will take about 6 months.
Note here that most cases are already pretty old by the time they get to an appeal. Folks have gone through a non-final rejection and a final rejection, and typically also one round of an RCE (request for continued examination) to attempt to resolve issues with the examiner. Most appealed cases are also not “original” application filings in that most claim priority to one or more earlier filed applications (US non-provisional; US provisional; PCT international application; or foreign application filing).
After the final rejection, a patent applicant has a six-month deadline for filing a notice of appeal (NOA) followed by an appeal brief within two-months of the NOA. The examiner then has two months to file a responsive brief (answer). And, that may be followed by a reply brief. The fast-track will not impact these timelines.
Federal Register Notice: https://www.federalregister.gov/documents/2020/07/02/2020-14244/fast-track-appeals-pilot-program
USPTO Announcement: https://www.uspto.gov/about-us/news-updates/uspto-announces-fast-track-appeals-pilot-program
People are bragging about making Examiners withdraw when they wouldn’t have appealed unless the numbers showed the Examiner was already likely to withdraw.
You beat the worse players 90% of the time? Congrats! You are average!
How many appeals withdrawn after receiving an Examiner Answer? 75-80% IME
I have seen zero withdrawal of appeals after an examiner’s answer.
I cannot speak for AAA JJ, who has provided his numbers, but I would hazard a guess that your sense of “IME” was pulled directly out of your arse.
Your conclusion re the factual source of publicly cited statistics seems to be distressingly and unprofessionally true these days, perhaps due to the leadership of POTUS? Simple logic would question why 70%-80% clients that had already paid all the attorney and PTO appeals fees would withdraw their appeal after getting an examiners answer?
The rare times I ever did so was to file a continuation with re-written claims after inheriting a clearly unpersuasive appeal brief written by another attorney, but only after the continuation filing was confirmed.
“perhaps due to the leadership of POTUS?”
I am certain that POTUS contributes to the distress and lack of professionalism.
I am also certain that POTUS is not any type of cause of the distress and lack of professionalism, as such is very much evident across the spectrum (and deeply on the Far Left that very much oppose POTUS). So soon do you forget Malcolm? He was the epitome of POTUS on these boards before his departure this past spring, just after celebrating his fifteen year mark.
In 21+ years of practice I have never looked at an examiner’s “stats” when deciding to appeal. The decision is on the merits. Every single time.
In 21+ years of practice I have never withdrawn an appeal after an examiner’s answer.
IME
Scott’s “Post-Grants” blog today provides a detailed explanation of why “New Pilot May Not Accelerate Post-Grant Matters”
I’ve appealed 52 applications in the past 7 years. 23 (44%) were re-opened and eventually allowed by the examiner.
Thanks AAA. I have not dug into the statistics on this for a few years.
44 per cent? So you are persuasive less than half the time? I know people like that.
… and I know people who have a zero percent persuasive value at a greater than 95% single person focus factor.
Beep beep.
Of those that went on to appeal, how many reversed the examiner on at least one rejection? 44% seems to me like maybe they should have been allowed, and the examiners knew it. You called their bluff.
Of the remaining 29, 19 were completely reversed, 6 were affirmed, and 4 are still pending.
So, if my math is correct, of the 48 that have been concluded, the examiner ‘was smacked’ (either changed his mind or was told to change his mind) 87.5% of the time…
Even ignoring the ones that were ultimately allowed after reopening (which may mean additional amendments were employed to reach patentability), 19 reversals over 25 completed appeals is a 76% WRONG rate for the examiners.
What art, may I ask?
good question – But I still posit that it is the higher 87.5% that is the WRONG rate for the examiner (since that is the number of both being told flat out that the examiner is wrong combined with the examiner realizing that they were wrong and reopening on their own before being so told.
AAA JJ, do you have an answer that you would share?
The 52 cases are from every TC except 1600 and designs.
+1
Careful, Snowflake. What happened the last time you designated an expert?
Ah yes, my mindless ad hominem laden friend with the shifting historical pseudonym penchant, did you have a point that you actually wanted to put forth?
Do YOU really believe that a person being congratulated for a particular point MUST be elevated to have everything that they have ever said to be likewise considered ‘sacrosanct?’
Did you always have this issue of not being able to apply critical thinking on an issue by issue basis?
You tell me to be careful (with an insult that fits yourself vis a vis “Snowflake”) while yet another anvil lands on your head.
Beep Beep.
Ding Ding Ding!!! “Beep Beep” !!
And there it is!! Snowflake has a new tell!!!
Memes and tells…
Wash rinse repeat (anvil falls on Shifty’s noggin).
Classic.
Ding Ding Ding!!! “anvil” !!!!
Snowflake has Yet Another New Tell !!!
Will he go for the Trifecta?? Or fall back on one of the old ones???
Do you realize your own “tells,” my friend with the shifting historical pseudonym?
Or is it memes when you use them? Are you suffering from selective misapplication of terms (gasp, another meme of yours)?
Is that another ACME box for the Wile E. Coyote train wreck?
And he goes for the Trifecta!!!
? What have you added with this comment?
It’s like you are eager for that anvil landing on your noggin.
What have I added? I pointed out that you went for the Trifecta!!!
Your meme/tell/whatever of “trifecta” is meaningless.
That you want to crow about doing something meaningless is rather ‘anvil on the noggin.’
Beep beep.
Ding Ding Ding!!! “Beep Beep” !!
It’s official!! Snowflake has a new tell!!!
What is “Ding Ding Ding”…?
Is that a tell or a meme?
Does it matter?
Does anything that you post matter?
Or are your postings simply reflective of your inconsequential life?
Snowflake is becoming self-aware?
Non-responsive.
Try again.
Yes, Snowflake. You are compellingly persuasive. [checks watch]
Still not responsive (not sure why you would want to check your watch — are you timing something?)
Yes! You are very Special, Snowflake!!!
Maybe focus less on timing and maybe focus more on being responsive.
We still don’t know what it is you think you’re trying to say, Snowflake.
That would be a “YOU” problem — no matter how you attempt to spin it otherwise.
But how many will pass PTAB after issuance?
I have one quibble with your post.
You have implied that a continuation application is not an “original” application (“Most appealed cases are also not “original” application filings in that most claim priority to one or more earlier filed applications”). This is incorrect. An original application is any application other than a reissue application. See MPEP 201.02 (“‘Original’ application is used in the patent statutes and rules to refer to an application which is not a reissue application”).
Thanks. Point taken.
I did explain my meaning of the term in the post in an attempt to avoid confusion. But I should probably used a different term in the future.
The fault lies more with the MPEP. It is odd that it has defined “Original Application” to mean not only the original application, but also any continuation of the original application.
Looking in from Europe, my eye is drawn to the sentence: Quite often examiners withdraw their rejections after seeing the patent applicant’s brief.
I follow the mantra that “There are no dumb questions”. Given that an Applicant will not be appealing until after failure of sustained efforts to convince the Examiner, using other channels, what is it in the Appeal Brief, the magic ingredient, that succeeds in turning the Examiner around so often? Could it be that somebody else inside the PTO, other than the Examiner, has the job of assessing the Brief?
A couple years back the USPTO instituted a pre-appeal conference review.
The first two dozen of such uses provided the examiner rethinking their position at a rate of 100%.
That being said, a few years in, and that percentage started slipping.
In the larger scheme of things, it very much depends on the ‘higher authority’ within distinct and separate art units (this also should not surprise anyone that has been paying attention).
That’s (for me at least) a very informative and revealing answer. Thank you.
The question often asked by a client caught up in inter Partes proceedings: is there any point in appealing this adverse decision? The answer varies with the jurisdiction, it seems to me. In the courts of England it has always been that about 3 in every 10 disappointed parties appeal. At the EPO, I would say, it is more like 9 out of 10.
But over here, thank goodness, it makes no difference to the assessment, which art unit the case is in.
If you had been paying attention, the US Sovereign has been torn apart along Art Unit lines precisely because of the Supreme Court and their scrivining from the bench.
… and make no mistake, your own obfuscations between other Sovereign’s view of “technical” and the different US Sovereign choice of Useful Arts reflects the difficulties that I comment upon.
In other words, you are very much part of the problem.
The “problem” is to deliver justice without the obligation to take every case to the highest level of appeal. At the PTO, early and high quality interlocutory review of the appeal brief can mitigate that problem.
But of course, you are right, what is most needed is optimal statutory language, together with interpretation from the Supreme Court and Fed Ct that is formulated as clearly and precisely as the Statute allows.
What is most needed is for the Supreme Court to NOT stick their fingers into the wax nose of patent law. It is their meddling that has cascaded to problems on an art unit basis in the patent office.
Given the Statute, I’m not sure what other reasonable course was available to them.
The actions of the Court are in disregard of the Statutes.
That you seem unable (or unwilling) to grasp this is very much part of the problem.
Max, there is a surprisingly high rate of Fed. Cir. appeals of IPR decisions due to the fact that most IPRs are in response to infringement assertions hence real money riding on them. Even though the APA controls and the re-arguing of IPR factual decisions rarely succeeds. The relatively small number of successful IPR appeals are largely based on demonstrated IPR legal errors, especially due process violations, claim scope interpretations, and giving the wrong weight to, or ignoring, relevant evidence.
Of course we now also have a clever argument, just now on Government-supported certs, and affecting many appeals, that the PTAB APJs were all unconstitutionally appointed.
Max,the “magic ingredient” in some cases is that writing a good reply brief is a lot more work than an allowance or even finding and applying better references for a new rejection. Or it might be a new examiner who has never done a reply brief and is insecure about doing it?
Or…
It might be that the usual tactic of rubber-stamping a shoddy office action (in the likes of ‘just say no’) is going to go to a tribunal and an answer there of “you examiner did shtty work” will have a direct impact on that examiner’s paycheck (contrast with the typical shtty work being regarded as “high quality.”
Since you have been out of prosecution for ages, I will put more weight in my rendition.
I have been told by examiners that PTAB reversals are not counted against them in their performance ratings. Do you have information to the contrary that this has changed?
Reversals by the PTAB are not “held against” examiners in their performance reviews/ratings.
I stand corrected.
So ‘officially,’ they are not “held against” the examiner. Still and all, losing such an appeal (on the record) opens the door for every other applicant with that examiner to blow a hole through the ‘examiner’s tricks’ that resulted in that lost appeal.
This is not the most correct answer, but there is some truth to it. In almost every response I get there are amendments. And in the majority of cases, when there are amendments, the prosecutor’s comments are generic and perfunctory. Appeal briefs are rarely generic and perfunctory. So, for quite a few of my cases, the first time a prosecutor has tried to articulate a specific difference between the references and the claims is in the appeal brief.
I have had many applications re-opened by simply cutting and pasting my arguments from the NFOA response or the FOA response into a pre-appeal or appeal brief.
Thank you, Ben. Your:
“……… for quite a few of my cases, the first time a prosecutor has tried to articulate a specific difference between the references and the claims is in the appeal brief.”
explains why I as a prosecutor at the EPO routinely receive from US law firms instructions to reply to an Office Action that are worse than useless (because they lower their client even deeper down into the hole he’s in). These people seem to think that one can wait till the appeal process before one engages with the objections and explains how it is that they are not well-founded. At least as far as RoW is concerned, big mistake.
Max, one reason for not making effective enough distinguishing arguments early enough is that some U.S. attorneys are very concerned about avoiding “prosecution history estoppel” that may effectively narrow claim scope in litigation of patent claims. [More than a little academic if they don’t get claims allowed.]
Paul, you see it as I do, that the avoidance of file wrapper estoppal (FWE) is something of concern only after claims get to issue.
The interesting thing for me, prosecuting cases at the EPO is the situation where a US instructing associate sets the importance of hypothetical estoppal in US litigation, on the basis of the file of the EPO patent family member, higher than getting a patent to issue in Europe.
Seems a pity to me. But, hey, who am I to doubt the instructions I am given.
It is beyond odd to say that “the avoidance of file wrapper estoppal (FWE) is something of concern only after claims get to issue.” because if you think it ‘only of concern’ AFTER the point of time with actually dealing with it, then you will never deal with it.
Sure, one cannot cut off their nose to spite their face and do things that prevent obtaining a grant, but THAT is NOT what avoidance of file wrapper estoppal is about (and is advance by those who have lost — if they ever had — an understanding of prosecution.
I don’t know the specifics of the EPO system, but I would be inclined towards adopting a system with extra eyes on every action. Preferably involving a random assignment of reviewers within art units. At the current PTO, examiners need not interact with each other much. And it is entirely possible to have one art unit with 5 examiners with a high threshold for 103 and 5 examiners with a low threshold for 103. If those 10 examiners were forced to acquire signatures from random examiners within their art unit for every action, their relative threholds would converge over time.
We could have such a system if the stakeholders wanted it. But we don’t. Perhaps, if you system really does runs better, it’s because your stakeholders actually value quality rather than merely pay lipservice to it.
Ugh. That reply was meant for 4.3.1.1.
The examining division at the EPO works very well. If you get a summons to oral proceedings you know all three examiners back the rejection. The one signing the OA’s is not just sending out nonsense hoping to generate RCE’s (which they don’t even have). The case is either allowed or your summoned to oral proceedings. (Of course you can make auxiliary requests in oral proceedings and the examiners really do consider the merits of the requests.)
Ben, how we got there at the EPO is an accident of history, rather than the outcome of stakeholder bartering. Back in 1978, when the EPO got started, experienced national Patent Office Examiners from all over Europe began work at the EPO. Applicants were hesitant to choose the EPO (instead of national Patent Offices). So the EPO needed to offer higher consistency, greater legal certainty, in order to compete, and survive. Hence, 3-member Examining Divisions, the 3 members coming from three different EPC Member States.
There are other such accidents of history. For example why the EPO has search and exam as successive, separate, progress steps. In 1978, the EPO Search Dept was established at The Hague (a pre-existing search institute) whereas the Examiners were all in a brand new building in Munich.
The interesting thing for me, prosecuting cases at the EPO is the situation where a US instructing associate sets the importance of hypothetical estoppal in US litigation, on the basis of the file of the EPO patent family member, higher than getting a patent to issue in Europe.
Why is that so surprising, that the patentee should be more concerned about not damaging the value of the US asset than of bringing the EP asset to allowance? The US market is roughly equal in value to the whole EU market, but few patentees validate in the whole EU (the fees involved in such a validation scheme are cost prohibitive). Rather, most validate in only a subset (usually rather a small subset) of the EU jurisdictions. That means that the economic value of the market exclusivity obtained from a US patent is usually much greater than that obtained from the set of local (e.g., DE, FR, GB, etc) European patents obtained at the end of EPO prosecution.
The US asset is simply more valuable than the European assets. No wonder, then, that economically rational market actors are willing simply to let the EU assets wither on the vine, rather than move them forward via means that could prejudice the value of the corresponding US asset.
Exactly this. The risk of losing US rights outweighs the value of EPO rights.
Well yes, Greg, I accept those points. Of course I have to, because the client knows best. It isn’t “surprising” to me and I didn’t say that it was. What I was driving at was a balance between the business reality today, of “no patent outside the USA”, with a mere hypothetical, that something on the EPO wrapper one day will have such a large adverse effect in the USA as to leave one wishing one had never come to the idea of seeking patent protection outside the USA.
And then there is your point about the size of the market in Europe and whether a patent enforceable in (say) DE, FR and GB is enough to control the entire market in Europe. Other than Big Pharma (not my field), it often is, isn’t it? These days, the US medical device makers seem to be finding the European market both lucrative and very competitive. Is the US market, for them, so much more important, I wonder.
MaxDrei,
Your song and dance is not becoming. You clamor about ‘what you did not say,’ and then go ahead and say the same thing over again.
You got called out for throwing CRP against the wall, and (unrepentant) do it again – all as you shill for the ‘EPO way.’
Re: “So, for quite a few of my cases, the first time a prosecutor has tried to articulate a specific difference between the references and the claims is in the appeal brief.”
Ben that may be true, but I had to laugh because of the many times I heard almost the same complaint from the other side, except that “prosecutor has tried to articulate ” was “examiner had paid attention to.”
Examiner’s answers and pre-appeal conferences require the review of at least one SPE and one other SPE/primary.