How long does a BPAI appeal take?

Academic Studies, BPAI, Patent, Patent Prosecution

PatentLawPic037In the first two weeks of September 2007, the Board of Patent Appeals and Interferences released over one hundred opinions. I looked at the file wrapper histories of thirty of these recent BPAI decisions to get some picture of the timing of BPAI appeals.

On average it took just under 18 months (542 days) from the filing of the appeal brief until a decision was reached by the BPAI.  The mean hides a wide range of delay: From a minimum of 9 1/2 months to a maximum of 44 months. (Standard Deviation 255). 

Most of the time delay is not attributable directly to the BPAI. Rather, most of the delay occurs between the date that the appeal is filed and the date that the case is submitted to the BPAI.  On average, it took about 11 months (328 days) to ‘complete briefing.’ Typically, that time period involves the applicant’s brief; followed by an examiner’s answer; and finally a reply brief. Once the case is submitted to the BPAI, the average decision time was seven months (214 days).

If you win an appeal, the Examiner may reopen prosecution with an additional rejection, although the more common approach is to issue a notice of allowance.

Based on this information, you can advise clients that an appeal – pushed through to the end – takes an average of 18 months, but that there is a wide variance.  As I noted earlier in 2007, only fewer than of appeals are pushed-through to the end. [Link].  In many cases, Examiners withdraw rejections or applicants file RCE’s with new claims. These calculations also do not include time delays associated with BPAI rejections for improper appeal brief form. Instead, I only began counting once a ‘proper’ brief was filed. In an earlier study, I showed that approximately 25% of appeal briefs are rejected on procedural grounds as either defective or incomplete. [Link].

The prosecution history of a patent application typically includes at least two substantive rejections prior to the appeal brief. In this sample, the average application had been in process for over three years (39 months) before the appeal brief was filed. 

As with essentially every other area of patent law, we can expect that BPAI timing and results will vary by technology area.

Notes:

Patently-O Tidbits

Academic Studies, Design Patent, License, Patent
  • Lemley (Stanford) & Myhrvold (IntVen) have released a short article on “how to make a patent market.” They suggest that an information gap is one problem creating friction in licensing negations. The solution — require publication of patent assignments and license terms. [LINK]
  • Over the past few weeks, we have directed some focus on the protection of industrial designs. Why? (1) the law surrounding protection of industrial designs is in disarray; (2) I expect that protection of industrial designs will become more important as utility patent protection becomes more difficult and more costly; and (3) if well protected, industrial designs & fashion rights may well be worth more than the value of all non-pharmaceutical utility patents.
  • New Patent Law Job Postings:

2007 Patent Litigation: Timing the Transition from Patent Issuance to Patent Litigation

Academic Studies, Patent

In the past, I have filed patent infringement lawsuits on the same day that the patent issued.  That highly aggressive strategy is not the only approach — many patentees delay years before filing suit.

In order to determine how long patentees usually delay before filing suit, I pulled-up all twenty-one hundred US patents that have been asserted in patent litigation or reexamination cases in 2007. (Restricted to lawsuits filed 1/1/2007 to 8/15/2007 notice of litigation had been filed with the USPTO). 

For cases filed in year 2007, the ‘average’ patent issued seven years ago in 2000. The median issue year was 2001 — a six year delay in filing.  The histogram below provides an idea of the distribution of the number of years between patent issuance and commencement of litigation for the 2007 lawsuits.

Although most lawsuits are filed by the time a patent is six years old, it is striking that about twenty-five percent of the patents in the 2007 lawsuits are more than a decade old.

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Overall, has your company made money from the patent system?

Academic Studies, Articles and Publications, Business Developments, Patent

On August 7–8, 2007, I conducted a simple survey through Patently-O. [See Survey].  Readers were asked whether the patent system, taken as a whole, had been positive (made money) or negative (lost money) for their company.  The results below show the responses of 131 corporate employees who are all highly involved with their company patents.

The results here follow a predictable pattern: On average, pharmaceutical companies see patents as a profit center while software companies see patents as an overall loser.  (At 95%CI, Software & EE results each differ significantly from Pharm results).

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Notes:

  • Next time: Is this an important question?
  • The Survey [LINK]
  • Bessen & Meurer: Negative Return on the Patent System
  • On the process:
    • The above graph merges responses from small corporations with those from large corporations. It also excludes individuals at law firms, government entities, and educational institutions. 
    • Individuals responded to the question: “Overall, has your company made money from the patent system?”  There were three potential responses: “Clearly positive (made money”, “Unsure whether positive or negative”, and “Clearly negative (lost money).” For the graph above, these responses were converted to a simple numerical scale: 1, 0, and -1, respectively. The y-axis above ranges from -1 to 1.

Sarnoff: Granting Patents Immunity from Market Regulation is Neither Warranted Nor Sensible

Academic Studies, Patent

ScreenShot009In the most recent Patent Law Journal article, Professor Joshua Sarnoff discusses implications of BIO v. DC. He opens with the following:

In Biotechnology Industry Organization v. District of Columbia,  the U.S. Court of Appeals for the Federal Circuit took another big step toward assuring that a granted patent conveys immunity from market regulation. 

Professor Sarnoff then explains why granting such immunity is “neither warranted nor sensible.”

Women as Patentees

Academic Studies, Inventors, Patent

Patents are intended to lure potential inventors into the business of innovation.  The truth is, however, that very little is known about how patents really drive innovation.

Historically, only a very small number of women have obtained patents. Data from historic studies:

  • 1790 – 1895: About 1% were granted to women;
  • 1905 – 1921: About 1.4% were granted to women;
  • 1954: 1.5% of issued patents included women inventors;
  • 1977: 2.6% listed one or more women as inventors;
  • 1996: 9.2% listed one or more women as inventors.

Since patentees do not list their sex, all of these studies rely upon segregating inventors according to traditional first-names.

2006: In my own recent study, I looked at a sample of 150,000+ patents issued between 1999 and 2006.  I then made a list-ranking of first-names of first-listed inventors. Can anyone guess how many of of the top-100 inventor-names were traditionally female names???

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Evidence Based Prosecution: Non-Patent Prior Art Leads to Rejections

Academic Studies, Patent, Patent Prosecution

ScreenShot041Quality patents depend upon our ability to find and examine prior art regardless of its form. Most prior art cited by the USPTO arrives in the form of patent-related references — most notably, issued U.S. patents, published patent applications, and foreign patent documents. We know, for instance, from Columbia Professor Bhaven Sampat that about 90% of cited non-patent prior-art references are provided by the applicant, and that only 10% are examiner references. Link.

In some technologies where patenting has a long and extensive tradition, the lack of non-patent prior art is not a serious problem.  In other areas such as software and biotechnology, non-patent references harbor most of the important prior art. 

Results: My new study of 100,000 recently issued patents reveals that patent that cited non-patent literature are significantly more likely to receive rejections from the PTO.  Specifically, patents citing at least one non-patent reference have a 39% greater chance of receiving a final rejection when compared with patents that issued without citing any non-patent references. Regarding non-final rejections, citing non-patent prior art increased the likelihood of receiving a rejection by 9%.

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Evidence Based Prosecution II: Independent and Dependent Claims

Academic Studies, Patent, Patent Prosecution

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Part II of my new series on evidence based prosecution focuses simply on a descriptive feature of the patent application.  How many independent claims should you file? Although we don’t answer that question here, we can answer the question of how many are usually filed.  Using data collected from patent applications published thus-far in 2006, I constructed the chart above comparing the average number of independent claims in a patent application to the total number of claims in the patent. 

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