In his latest blog post, PTO Director David Kappos addresses the backlog of ex parte appeals of patent applications and reexaminations. He notes that the backlog has increased dramatically, while the BPAI is diverting resources to prepare for the new post-grant review and inter partes review proceedings that go into effect September 16, 2012.
The problem is immense, and getting worse. The board seems to be handling its docket of contested cases and reexaminations. Ex parte application appeals, however, are another matter. As of March 2012 (half way through FY2012), the board had disposed of 4,310 ex parte appeals from patent applications. That’s a pretty good pace of 718 per month. Unfortunately, 6,722 appeals were filed during that same time frame, an average of 1,120 per month. So, a net 402ex parte appeals from patent applications are being added to the board’s docket each month. The backlog of 23,963 appeals at the end of FY2011 has grown to 26,375 as of March. The pendency from filing to board decision for these applications is 83.8 months or nearly 7 years.
Some have argued that a large part of the problem is that many appeals are sent to the BPAI prematurely or unnecessarily. Director Kappos notes that the PTO had the Office of Patent Quality Assurance review 1,300 pending appeals to see if this was the case. He notes that a low percentage of cases contained deficiencies and were not ready for board disposition. This seems to mean that the PTO was satisfied that there is not a high number of unnecessary appeals.
As noted, the BPAI has disposed of 4,310 ex parte patent application appeals as of March 2012. Of that number, 2,029 (47.1%) were affirmed, 1,465 (34.0%) were reversed, 602 (14.0%) were “affirmed-in-part” (and presumably reversed-in-part), 121 (2.8%) were dismissed, and 93 (2.2%) were “administrative remands”. Presumably, the dismissals were cases where the applicant failed to prosecute the appeal or respond to some request from the board. The “administrative remands” were probably cases where some deficiency in the appeal caused it to be returned to the tech center or examiner.
Reviewing the cases actually decided on the merits, 50.5% of the appeals (2,067 out of 4,096) were reversed, at least in part, while only 49.5% (2,029) were completely affirmed. This percentage seems too high. Applicants who have important inventions may want to take their chances on appeal when the percentage of reversals (at least in part) is over 50%. A reversal-in-part means that applicants at least get another shot with the examiner on some of the claims, and may get an outright allowance.