Notes on Ex Parte Appeals of Patent Cases

Patent

by Dennis Crouch

  1. The vast majority of ex parte patent appeals (92%) are focused on obviousness, with 2/3 of those only addressing obviousness questions.
  2. It is rare for any other issue to be the sole issue on appeal:
    • 2.5% of appeals solely focus on Section 101;
    • 1% of appeals solely focus on Section 102;
    • 2.2% of appeals solely focus on Section 112 (including 112(a) and 112(b)).
  3. Applicants regularly win obviousness appeals — winning reversal of the obviousness issue in about 35% of cases and partial reversal of the obviousness issue in at least 5% more.
  4. Applicants rarely win appeals based upon Section 101 — Eligibility rejections are affirmed in 90%+ of cases.
  5. Perhaps not surprising, the most cited case appears to be the Supreme Court’s obviousness decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).

* These notes come from a set of recently decided ex parte appeals that I have been working throuhg – DC