I used data reported by the Board of Patent Appeals and Interferences (BPAI) to compile the chart above. The chart reports the number of pending appeals each month from October 1997 – May 2009.
I used data reported by the Board of Patent Appeals and Interferences (BPAI) to compile the chart above. The chart reports the number of pending appeals each month from October 1997 – May 2009.
A lot of reasons go into this trend. A big one is the PTO reopening prosecution before an appeal is decided. Around 2000, this was unusual (except for allowance of the case). Nowadays, an Examiner will stick by the same reference(s) during 2 or 3 Office Actions, and yet when an Appeal Brief is filed, miraculously withdraws the rejection, even though the Brief offers no new arguments.
-Mark
I did not mean to sound as though it wasn’t one possibility but rather meant to acknowledge that there are other factors involved, such as applicants wishes, SPE/QAS/Primary, production pressures, successfulness of apeal vs RCE, latests fads, experience of both parties and many more factors.
I just reacted strongly to your assurance that disagreement between these two parties was the only reason. In any case, it would certainly be worth further analyzing.
..or as often as needed (gratuitously speaking of course).
anon: “I think that KSR has definitely had an impact at least on the large increase since it came out.”
Of course it has.
But it appears that GP has “run away.” Never fear: I’m sure one of the regular commenters will be along shortly to criticize GP for this abhorrently un-manly behavior and then continue to bring it up over and over again at least once a month.
Mark,
“Why do we both read the same case law, rules, and manual (MPEP) and still come up with such differing views on what is allowable?”
While I appreciate the posts of Examiner #9 – with his (or her) typically refreshingly thoughtful stand on topics, one only has to look at the more typical and thoughtless examiner posts on these boards to answer your question. The typical boorish examiner (at least the typical posting boorish examiner) either does not read or does not comprehend the Law, regards case law as optional lawlol, does not understand how to diagram rule sentences in order to understand what the rules stand for, believes that the Office can take whatever interpretation of the rules that they want to in any given circumstance to further their agenda and hold the manual in utter contempt if it gets in the way of what they want to do.
The majority of examiner postings may embarrass examiner #9, but considering the dogma of the upper (mis)management and the relative inexperience of the examining corpse as a hole [sic], the answer to your question is quite obvious.
(Ron K, perhaps this should serve as additional evidence for the Office’ disregard of presidential directives)
Ron K,
Thank you once again for your efforts in combating the Office’s illegal power grabs. Your submitted comments on the Appeal Rules in conjunction with the Continuation Rules portray the Office ambitions in a stark and unanswered standing. The blatant disregard for presidential edict is practically criminal.
“Actually it represents no such thing.”
Is my interpretation offensive? I thought it was self evident that a case is appealed when the examiner and applicant cannot reach agreement on what is allowable under the law. If the appeal rate goes down, then overall, the view of applicants and examiners on what the law says is converging. If the appeal rate goes up, then the view of applicants and examiners on what the law says is diverging.
The issue isn’t who is right or who is wrong. The issue is what fundamental forces are causing this divergence. Why do we both read the same case law, rules, and manual (MPEP) and still come up with such differing views on what is allowable?
Max, it appears the US is effectively taking the European view of unexpected results = “bonus effect”, at least from what I’ve seen. I don’t have the time or money to pursue study of this , but it piqued my curiosity enough to keep me looking on my own dime for some time. When I was an examiner years ago, I wasn’t so tough on applicants.
As far as proving some artisan would take that view, I believe we have shown the claimed system is of a different kind than the applicant’s, and there are other holes in the rejection that I did not mention here for brevity (it is a four reference 103 with one “reference” being the taking of official notice). I’m dying to see whether the appeal board affirms this rejection.
Thanks Appealho. All sorts of thoughts come to mind.
In Europe, if it is prima facie obvious to combine some combination of technical features for a specific purpose then an unexpected result delivered by that combination could be seen as a “bonus effect” that comes when the skilled person marches down the “one way street” of development in the relevant technical field. If the PHOSITA on the relevant date would have thought the combination would prejudice operation of your primary reference, then the combination of references wasn’t obvious, is it. But did you prove that the PHOSITA would take that view? If not, why should the PTO believe your assertion? Trouble is, if the PHOSITA on the relevant date would not have had the means of appreciating that the combination would destroy the operation of the primary reference, then he would have been free of any deterrent to trying out the combination, and so the combination at the time would have been obvious.
Which in turn reminds me of the recent English case where, had the claim been assessed as of an earlier date, it would have been obvious. But, because it was later, it was not obvious. In the meantime, a research publication had “taught away”. Great fun.
in-house and max, my case lies within what is considered to be “the predictable arts.” The data of the study relied upon was in the specification, and we have argued the unexpected nature of the results over the past seven years of prosecution (I inherited this case – I would have appealed a few years ago!). I suggested playing up the unexpected results as a backup in view of the applied 103 combination. And, we did in fact argue that the combination would destroy the principle operation of the primary reference (I believe this argument should be convincing, but section 103 has become somewhat unpredictable in view of KSR).
This is a business-related application. It is not a method, but a combination of things that showed very surprising results in the test study. During an interview, the examiner requested more data to support the assertion of unexpected results. It would be difficult, but not impossible to satisfy the examiner’s request. We asked whether providing the additional evidence requested would be sufficient to overcome the pending 103 rejection, but the examiner would not agree. So, we concluded it would most probably not be fruitful to pursue the secondary considerations in any further detail.
in-house is correct about timeliness. We got the declaration filed just before filing the notice of appeal. Because it is not a new issue, it will be entered when be file the brief.
MaxDrei said in reply to appealho:
to point 1 – my experience has been examiners don’t view my “suprising results” as evidence of patentability. Rather, the response I get from examiners is that the results were merely “expected” and not “suprising.”
point 2 – it is too late to add a 132 dec after prosecution closes.
Knee-jerk reaction (for what that’s worth)
1. Evidence of “surprising” or “unexpected” results is (I should have thought) more or less a sine qua non in chem/bio, or any field where results are not predictable. So, surely it is adduced before getting to the appeal stage and, if so, why does it work on appeal when it was not persuasive at first instance?
2. And if it’s not adduced at first instance, isn’t it too late to get it in only when lodging an appeal?
appealho–thanks for the (unfortunately discouraging) info–an impressive review. It’s consistent with what I’m seeing, but I’m hoping that for example a synergistic effect of a combination might in some cases succeed. Unfortunately I have also seen that the Examiner can always come up with some reason (however spurious it seems to me) that the evidence is not compelling, or (a new favorite) request additional information about how the experiments were conducted; then we have the choice of conducting additional experiments (which, based on the nature of the request, I am sure would also be found wanting, and of course would take time and resources away from pursuing new investigations) or of trying to argue, which has not to date succeeded. This seems fundamentally wrong to me from the perspective of what should be needed to shift the burden, but I guess we’re going to need to appeal to get a review, and since the Board appears to be rubber-stamping at this point I guess we would need to go to the Fed. Cir.?? Who can afford that?
Thanks also Znutar for the suggestions–I’ve tried these when I can, but have not succeeded in convincing the Examiner even when the argument seems compelling (to me). My impression is that this also happened in biotech in the 80’s, until the pendulum swung back in the 90’s. I think we’re just going to have to keep things pending until the PTO’s reject mentality decreases.
“It seems to me that the board (and examiners) can, if they want to, always find some reason why the evidence is not compelling.”
Secondary considerations are always “weighed” against the prima facie case, and it’s completely subjective how much weight to give, so big surprise that secondary considerations aren’t being given enough weight to overcome the prima facie case, ever.
This is why I try to rely as much as possible on showings that the proposed modification would change the principle of operation of the primary reference, or that it simply wouldn’t work for it’s intended purpose, since in both instances there is no prima facie case. These are trump cards in the way that secondary considerations are thought to be, but aren’t. I note that since the MPEP doesn’t have form paragraphs for how to respond to applicant’s arguments about principle of operation or working for intended purpose, I never get answers to these arguments. I tend to see the usual form paragraph about motivation to combine, without explanation. Part of the problem is getting an examiner to say what the proposed combination is – it’s hard to evaluate whether it will work if no one can articulate what it is. Apparently, everything is like soup, if it’s missing something, you just stir in the missing something. Why is it so difficult to tell me between which two nodes the new oscillator circuit will be attached, or between which two layers the new antireflective coating will be disposed. Sometimes you can get this stuff out of an interview, but usually what is discovered is that the examiner never considered the question.
in respose to monty: because we felt we had evidence of unexpected results, I did an unofficial study of BPAI decisions issued over the last six months (using their search function), and reviewed about 300 cases using the words “unexpected results.” At least a couple hundred of those cases did swing, at least in part, on the issue of whether there were unexpected results.
Results: only one case was successful in showing unpredictability/unexpected results. That one case was rejected, nevertheless, on other grounds that the 132 declaration could not overcome.
It seems to me that the board (and examiners) can, if they want to, always find some reason why the evidence is not compelling.
anon–any idea how the chem and bio “obvious to try” arguments are going at the Board? I’ve been wondering whether unexpected results are ever going to be enough now, where references can be identified that suggest the combination (however tenuously).
thank you for your comments, facts and explanations. looks like it is time to immediately start increasing the size of the BPAI.
Good comments from all.
Consistent with other opinions here, I believe that the major reason for the BPAI backlog increase is the skyrocketing rate of premature final rejections, pushing substantive examination into RCE’s and into appeal briefs. Abandonment rate has not increased much. See Slides 12, 14 and 15 in my UC Davis Law School presentation at
link to works.bepress.com . The trend began well before KSR, although KSR could have contributed to further recent escalation.
The dramatic changes in BPAI backlog prior to 2005 are explained in my 2007 Appeal comments at
link to works.bepress.com
What Dennis did not cover in his plot, is the BPAI backlog in the early `90’s. It was only around 2,000 and it only temporarily jumped to 9,000 later (see Figure 2 of my Appeal Comments). A spectacular USPTO management failure to plan for and hire BPAI resources despite projected increases in applications is evident as BPAI staff *decreased* during these years (see Appendix B of my Appeal Comments). Note also that during the precipitous decline in BPAI backlog prior to 2003, BPAI annual productivity was around 45 disposals per BPAI employee. But by FY 2006, BPAI annual productivity declined to only 25 disposals per BPAI employee. The latter value is not shown in Figure 2 but is based on the updated Trilateral Offices data that reported BPAI staff of 114 in FY 2006. The combination of all these three factors causes dramatic backlog rise. I have questioned the cause of the BPAI productivity decline in my comments to USPTO and it appears that the USPTO’s response was simply to stop reporting the number of BPAI staff in FY2007, so that no one may continue to monitor (and ask questions about) BPAI productivity. This is open government for you.
Does anybody have any thoughts about the possible causes for the average BPAI productivity decline to one appeal disposal per employee per two weeks? Is an appeal disposal rate of 45 per year unsustainable? Has there been high attrition of experienced APJ’s because of burnout under the backlog pressures of the late `90’s? If so, what should we expect from this new USPTO-generated bubble of 2009?
“Did somebody actually say KSR may have caused the spike? KSR!!!! Published in 07?!!!
Hah!”
While I agree with most of your observations, GP, I think that KSR has definitely had an impact at least on the large increase since it came out. Just look at the figure, the numbers are almost literally “off the chart.” For example, in the chem and bio areas, there are cases going up to the Board now based on “obvious to try” rationales – these NEVER would have made it up to the Board pre-KSR. Also, in the electrical/mechanical areas, I’ve seen quite alot of “combination of known elements to achieve a predictable result” analysis with pretty weak “real” reasons from the Examiner for anyone wanting to make such combination (in the absence of improper hindsight based on Applicant’s invention). While a good bit of these are being overturned at the Board, I think that most (at least some) would’ve never made it there in the days pre-KSR. Bottom line is that in the “borderline” cases where the Examiner might have previously been inclined to allow the case based on attorney argument alone, now the same rejection is being maintained in the absence of any “real” evidence showing new or unexpected results.
Agree with GP. Always appreciated the correlation, which is why I have become appealho. Funny, the graph looks like it needs to be bode plotted!
“Bilski is too recent to be a factor in this graph.”
I’m referring generally to the use of 101 to tank crappy business methods and the like. That’s been going on for some time prior to the Federal Circuit decision.
I also note that the last data point is May 2009. Remind me: when did Bilski come out?
Bilski is too recent to be a factor in this graph.
GP “Hah!!!”
And yet the data remains consistent with my comment.
I’m not sure why you seem to believe that the effect of KSR and Bilski should be ignored.
Those cases seem to trouble a few commenters here, who believe that by applying those decisions the PTO is unfairly denying them (or their clients) patent protection.
Are those commenters just making stuff up?
Or are you one of those comments who believes that the PTO is “randomly” keeping a bunch of patents from issuing.
MM – FAIL@!!!!
Ahahahaaaaa.
Don’t be such a law student.
Admitting you’re wrong shows more than martyring yourself for a lost argument.
“KSR is when it really spiked.”
Hah!!!!
Could you plot both on the same graph?
one big reason for the spike is the “second set of eyes.” When you penalize examiners for allowing cases and don’t penalize them for rejecting them, what did John Doll think was going to happen?
It’s a good thing the claims & continuations rules never went into effect, or the appeals would have spiked up at a much more alarming rate.
So when the PTO instituted its “patent quality” program, it should have expected that there would be a need to very significantly increase the size of the examining corps and the appeals board. This would be an immediate need since it takes three or so years to bring new examiners up to speed. It would be receiving RCE and appeals fees to help pay for these new examiners.
Me at 12:13 pm : “No reason to appeal if your claims are being allowed.”
Just sayin …
GP “Did somebody actually say KSR may have caused the spike? KSR!!!! Published in 07?!!!”
Yes, that’s when the graph begins to spike up dramatically. And for most of us in the real world, the decision in KSR was a forgone conclusion, just like the recent Fed. Cir. decision regarding construction of product-by-process claims.
GP “Any practitioner out there who has been prosecuting for more than about 7 years has seen the dramatic fall off in allowances.”
Narrower claims, maybe. But same number of allowances. It helps if your clients have actual inventions.
“So perhaps they were anticipating the spike in appeals when they introduced the Pre-Appeal Conference… but it was like trying to use an umbrella to protect against a hurricane.”
That was my thoughts on the issue of the conferences.
Interesting comments. I think that gideon pope is absolutely correct here. Lower allowance rate directly correlates with greater number of appeals. The proposed (but enjoined) rules further add to the current spike.
Looks a bit like the TED spread last fall.
So perhaps they were anticipating the spike in appeals when they introduced the Pre-Appeal Conference… but it was like trying to use an umbrella to protect against a hurricane.
“The point of inflection on the graph corresponds to a fix time after the PTO put out the internal word that they were going to “raise patent quality.”
Makes sense, Gideon.
Gideon Pope has a valid point on the recent rise [my comment was addressed solely to the prior drop.]
“upturn happened about the same time as the introduction of the Pre-Appeal Conference Brief (7/2005)” — interesting observation
OK bazooms, I’ll do the legwork for you . . .
link to patentlyo.com
See that graph?
Allowances took a dry dive in 03-04. Figure a 1-2 year lag to cycle through an RCE or two before saying – fling it! – and filing the appeal, plus docketing time, and you get to 2Q05, which is exactly the low point of the graph.
Come on people, you are mostly attorneys, right?
Well educated, well paid, and stooopid is no way to go through life.
PTO tells examiners to lower allowance rate (for whatever reason) , , ,
Examiners lower allowance rate , , ,
Applicants eventually file more appeals , , ,
BPAI backlog spikes , , ,
Thank you for making it so easy for me to make a killing in this business.
Did somebody actually say KSR may have caused the spike? KSR!!!! Published in 07?!!!
Hah!
None of the above?
[My guess is that this former big drop in Board backlog had more to do with a major Board effort under then CAPJ Bruce Stoner to reduce that backlog, increased numbers of APJ’s, interference APJ’s doing more ex parte appeals, plus more uniform [by compulsion] appeal brief formats, more RCE’s, and the CAFC TSM test before KSR. Although, yes, the Pre-Appeal Conference request system and some other pre-appeal reductions of unsustainable rejections in some art units helped.]
I can’t believe you’re all having such a hard time with this.
The point of inflection on the graph corresponds to a fix time after the PTO put out the internal word that they were going to “raise patent quality.”
Any practitioner out there who has been prosecuting for more than about 7 years has seen the dramatic fall off in allowances.
Dennis himself, on this blog, posted the plummeting allowance rate.
Go find that graph, find the point in time at which the allowance rate started falling off, and then compare it to the low point on this graph – they should be close to the same time.
Appeals went up because the PTO stopped allowing as many cases in order to, ostensibly, improve quality.
Really that simple, and KSR and the other stuff, above, has nothing to do with it.
BTW – many of the OAs I get nowadays don’t even reference KSR in the 103 rejections.
KSR was decided by SCOTUS on 4/07. The Fed Cir decision was 1/05.
The pending appeals numbers from the BPAI reports only count appeals that have been “docketed.” There is an indeterminate wait from filing the appeal to it being “docketed” at the BPAI (IIRC, varies b/w 3 mos and 20 mos with no rhyme or reason). Also some get kicked back up and down for formalities.
Bottom line: Not KSR at SCOTUS, but perhaps PTO application of 103 contrary to pre-KSR law (i.e., blowing off TSM before SCOTUS said that was the law).
Aaron,
I wonder if Ron K is up to the task of providing a similar chart, but with the additional +80% of applications that start down the Appeals superhighway that is not captured in Dennis’ data set.
Actually it represents no such thing. I personally think it represents the number of appeals pending before the BPAI or possibly the speed of my favorite rollercoaster. If you want to draw conclusions or correlations from a graph at least explain why such conclusions are reasonable.
Mark: “This graph represents the degree of disagreement between the patent examiner corps and the patent bar as to what the standards of patentability are.”
It’s safe to say that in certain art units there were no standards being rigorously enforced in the early noughts. Now there are some standards.
I would also like to see a graph of the number of examiners with more than 3 years experience versus number of applications filed
Dennis,
It would be great to see this data plotted against major Fed. Cir. and Supreme Court cases. Also, against the PTO backlog as well.
This graph represents the degree of disagreement between the patent examiner corps and the patent bar as to what the standards of patentability are. For some reason since the 2004 – 2005 time frame, that level of disagreement has been growing exponentially.
“The nadir coincides with that of issued patent quality?”
Surely that period from 1997-2005 has the largest percentage of the most embarassing crap the PTO ever issued.
No reason to appeal if your claims are being allowed.
So the Courts had to step in and put an end to the madness. That was KSR. Bilski is Round 2.
It’s KSR, then Bilski, combined with recalcitrant applicants who are playing the statistics and trying whatever they can to push their obvious or unpatentable crap through, encouraged by folks who brag about their success with appeals. So all the lemmings file appeals.
Throw in a hiring freeze and the fan blades stop turning.
The nadir coincides with that of issued patent quality?
It’s even more interesting that the upturn happened about the same time as the introduction of the Pre-Appeal Conference Brief (7/2005), which was supposed to help eliminate the necessity of filing appeal briefs in many situations.
The upward swing correlates roughly with the announcement of the new claims and continuation rules (announced early 2006, finalized 2007).
Cross reference this with the number of people on staff at the BPAI plz.
“What was going on at the PTO which caused the reduction in pending appeals from 1998-2005?”
The patent bubble.
What was going on at the PTO which caused the reduction in pending appeals from 1998-2005?
Comments are closed.