How long does a BPAI appeal take?

In 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:

• Law Students: Work at the BPAI

Comments

[anonymous patent lawyer]

"These calculations did not include time delays associated with BPAI rejections for improper appeal brief form."

Dang, I was hoping they did. I get a notice of improper appeal brief almost 50% of the time now. Many times, the notice is simply incorrect. I've had two in the past month where they neglected to look in a footnote for the spec line in the concise description. Other times, I've failed to put in an empty appendix or properly label headings. Sticklers. (I wish Examiner OAs were subject to such scrutiny).

[Elizabeth]

I can beat that, APL - I had one rejected because it was not docketed correctly as an appeal brief in the office, and by the time it was actually located and forwarded, the rules had changed.

[barney]

The BPAI law student internship/externship program has been "suspended until further notice."

[Larson]

Aren't there going to be more appeals now that the 1.78 rule changes have limited continuations???

Seems pretty bleak to me.

[Larson]

Aren't there going to be more appeals now that the 1.78 rule changes have limited continuations???

Seems pretty bleak to me.

[Larson]

Aren't there going to be more appeals now that the 1.78 rule changes have limited continuations???

Seems pretty bleak to me.

[Larson]

Aren't there going to be more appeals now that the 1.78 rule changes have limited continuations???

Seems pretty bleak to me.

[Ayn]

I would like to know the percentage of cases for which an RCE is filed. With the new rules, I doubt that will be the procedure followed.

[patent leather]

I predict it will soon take 5+ years to get an appeal. All of my colleagues are now filing appeals after every final rejection to avoid burning up the one RCE (in case the appeal is lost). Something needs to be done about this...

[KR]

My current thought is to appeal every final rejection while filing a first continuation application with only cosmetic changes to the claims.

[Paul F. Morgan]

These facts stand in stark contrast to the prior public arguments of PTO G.C. Toupin (to AIPLA committees and others, in support of the new PTO rules limiting continuations to two, and precluding more than one RCE per entire family), that PTO appeals require only 4 months and thus should be used instead!

N.B. This prosecution delay does not include the additional time period between the filing of the notice of appeal and the filing of the brief, plus any time periods of any other intervening activities such as the relatively new pre-appeal-brief conference request procedure.

Also, note the 25% rate of early purely procedural rejections (non-substantive refusals to enter) of briefs. The PTO is widely suspected of using those to artificially lower PTO statistics of appeal pendancies, even though in reality such appeals must all be re-filed and go into the regular Board backlog reported here.

[Jed Margolin]

But it only takes BPAI 20 minutes to decide a case, most of which is spent looking for their rubber stamp.

[MeAnonToo]

KR-

Accept your likely to burn through 1 or 2 office actions on that continuation will waiting for the decision on Appeal...

[Roger Karp]

Not to worry. When the proposed new appeal rules (see Fed. Reg., Vol. 72, No. 145, July 30, 2007) go into effect, no client will be willing to pay the cost of an appeal, and very few pro se applicants will be able to comply.

"Abandon all hope, ye who enter here" (or WTTE) - Dante, "The Inferno"

[Alun Palmer]

Time delays for improper briefs should definitely be included in the stats, as most of the notices are bogus. I have even had two notices of improper appeal brief on one brief, and they were both withdrawn as errors. Please recalculate, Dennis.

[me]

The patent office that hates patents!

[KCB]

Alright people let's discuss the problems and political machinations behind the ESDs. By now everyone should understand that the Content Providers are behind this unconsitutional rules. Firstly, the Director is attempting to require us to pay a private party, e.g., Dialog, for the use of their database; otherwise, we, or our client, cannot have access to government resource, i.e., the USPTO. This is not unlike Poll Taxes, which I believe were disfavored back in the 1960s. However, this does not end the payment to private parties. Let's say that you turned up 100 references in your Dialog search. Well those references will be subject to a Copyright fee of no less than $25.000 per reference. Now the client has to pay $250.00 for references. In essence we (our clients) must pay to private parties a fee for admission to the resources of the United States government . . . in this instance the use of the USPTO. Is everyone starting to see who is behind these rules. Has anyone missed the dog-and-pony show that the USPTO puts on in which it states it wants to thwart IP piracy and then focuses on Coyright Infringement. My fellow colleagues, we remove the yoke of the content providers grip that is slowly stangling the life from patent protection. If one sees how RIAA has been behaving lately it is no surprise that these rules run counter to the Constitutional mandates and the national character of the people of the United States of America.

[KCB]

Sorry I had a couple of typos . . . that would be $2,500.00 in references.

[anonymous]

KCB: Do the USPTO rules require the use of DIALOG?

[KCB]

Let's say it is recommended by the template rules. Moreover, a question was posed to Bahr as to whether a search of a publically available database, e.g., google or yahoo, would satisfy the searching requirements of the ESD. Bahr responded that he would hope the USPTO templates would be used. I strongly suspect that practitioners would be piece-mealed to employ the templates by the USPTO responding that ESDs that employed Google and Yahoo search engines did not comport with the ESD requirements.

[anonymous]

KCB: Until the USPTO mandates use of a pay-per-use search systems, I think concerns about unconstitutionality are unfounded.

[KCB]

So you are saying that the PTO cannot require us to use Dialog and other search engines that we have to pay for searching.

[anonymous]

KCB: No. You appear to be saying that its unconstitutional to require applicants to use Dialog or other private pay-per-use systems. Even assuming that you're correct, those concerns are still unfounded because USPTO isn't mandating the use of any particular private pay-per-use system or such systems generally. I don't believe that the USPTO will ever go that far -- even though they may encourage or prefer the use of pay-per-use systems.

[unanimous]

Man, where do you find the time to learn about stuff like "PTO templates"? Here, we're so busy we're still trying to wrap up f*@#(^& July!! I gotta retire.

[unanimous]

Man, where do you find the time to learn about stuff like "PTO templates"? Here, we're so busy we're still trying to wrap up f*@#(^& July!! I gotta retire.

[unanimous]

Man, where do you find the time to learn about stuff like "PTO templates"? Here, we're so busy we're still trying to wrap up f*@#(^& July!! I gotta retire.

[KCB]

Well you might save time is you only do single posts.

[me]

I disagree - the PTO has made the ESD rule onerous and difficult because they never want you to file one. I know I never will.