Last year the Board of Patent Appeals and Interferences decided over 7,000 ex parte cases. In about half of those decisions, the examiner rejections were entirely affirmed. After losing at the Board, an applicant has two primary avenues for challenging the Board's decision: (1) Appeal to the Court of Appeals for the Federal Circuit under 35 U.S.C. § 141; or (2) File a civil action in district court under 35 U.S.C. § 145.
By the time that the BPAI appeal is complete, the average applicant will have spent over $25,000 on the application and prosecution process. That substantial figure is an indicator that the potential patent right is probably seen as valuable. It turns out, however, that that well under 1% of applicants who have a right to further action actually exert their right to appeal or to a civil action.
There are several likely reasons why the rate is so low:
- BPAI Rehearing: The first reason for low appeals is likely that the BPAI has been fairly good at granting rehearing requests when there is a clear and easily identifiable mistake in their opinion.
- Low Likelihood of Success: Under Zurko, the Federal Circuit is required to give deference to the USPTO's findings of facts and only overturn those findings when "unsupported by substantial evidence." This standard is difficult to overcome. In the district court, new evidence is reviewed de novo.
- Money & Expertise: Both appeals to the Federal Circuit and civil actions in the district court can be quite expensive relative to ordinary prosecution costs. In addition, because most patent prosecutors have only limited federal court experience, a litigation or federal circuit specialist would likely need to be brought onboard the team.
- Alternative Approach: The courts are typically asked to answer a yes/no question on claim validity. However, patent applicants recognize that a patent with slightly narrower scope (through amendment) may be almost just as valuable as the original broad claims. With that in mind, many applicants return to the original examiner with proposed claim amendments that lead quickly to allowance.
What other reasons explain the low rate of using the courts to challenge USPTO decisions.