Last week, Patently-O reported on another crisis looming at the PTO.
Appeals Backlog Increasing Dramatically
There are now nearly 11,000 pending appeals at the Board of Patent Appeals and Interferences (BPAI). The BPAI is doing a reasonable job by disposing of 523 appeals during the month of May and nearly 4,000 so far in the current fiscal year. In that same month of May, however, over 1,600 new appeals were filed with nearly new 11,000 appeals filed during the current fiscal year. At the end of FY2008, there were fewer than 4,000 pending appeals. The rate of appeals being filed is nearly 3 times the rate of BPAI disposal. The data from the BPAI are here.
Although completely unsurprising, the increase in appeal filings is putting the BPAI in an impossible situation. It wasn’t too many years ago that appeals at the BPAI took 3+ years between the filing of the brief and a decision. This discouraged the filing of appeals and gave examiners greater power knowing that it was unlikely their decisions would be appealed. The BPAI did a great job of reducing its backload in recent years by issuing many decisions in less than a year. Now, however, it appears we are headed back to the days of 3+ years pendency. Presumably, the number of appeals filed will decline again when this starts to happen.
Recently, in an effort to get the judges to focus on efficient dispoal of appeals, the BPAI has been trying to reduce the number of dissenting and concurring opinions written by the judges and to reduce the number of remands back to the examiners. The BPAI has also been pushing for controversial new rules that would make it more onerous to file an appeal brief. Ostensibly, these changes are being done to increase efficiency.
What can or should the BPAI do?
One important step would be to increase the quality of examination by PTO examiners. Often, applicants will appeal cases where they believe the examiner is being unreasonable and not considering all of their arguments. It may be that the new KSR obviousness standard has examiners feeling more empowered to make rejections and applicants feeling more like their arguments are not being fully and carefully considered.
The PTO needs to give examiners sufficient time to consider arguments made by applicants during prosecution by eliminating the “count” system and replacing it with a system that more accurately reflects the effort required for conducting a proper examination. While beyond the scope of this post, this is an area where the PTO could significantly affect examination and operation.
Attempting to reduce or eliminate the number of RCEs and continuation applications filed will definitely not decrease the number of appeals filed. Any new rules to that effect would have the opposite result. So, the second recommendation would be to stop screwing around with the examination and appeal rules.
More on BPAI Statistics
It is also interesting to note that the BPAI is affirming the examiner’s rejections 55% of the time, affirming some and reversing some of the rejections 13.6% of the time, and reversing the examiner’s rejections 23% of the time (the remaining cases are remanded or dismissed for various reasons).
