Patent Law

Post-Board Muleage

By Gary Odom and Jordan Kuhn

Examiners consistently rely on baseless rejections, hoping applicants won't realize examiner ignorance, explore examiner incompetence, nor argue against examiner authority. Often, applicants amend or file RCEs, allowing examiners to milk applicants for all the counts they're worth. Rarer is the filing of an appeal brief, which can force examiners to abandon the charade and reopen prosecution. For rejections that actually make it to the board of appeals, and are subsequently overturned by the BPAI, it may be thought that allowance is in store. But Dennis Crouch shone light on the fact that, about 20% of the time, examiner stubbornness lives on, even after being shot down by the board.

Dennis Crouch reports:

To get a sense of how this post-reversal process operates in practice, I looked at a set of 149 decisions from 2006 where the BPAI had reversed examiner rejections. In 80% of cases, the examiner accepted the BPAI decision and did not re-open prosecution. In these cases, a patent generally issued within nine-months of the BPAI decision (median of six months) unless the applicant caused some delay. A typical delay is seen in IBM's Application No. 10/047,116. After winning an appeal on nonobviousness grounds and receiving a notice of allowance, IBM failed to pay the issue fee in a timely fashion. The patent finally issued after the PTO granted a petition to revive.

In the remaining 20% of the reversals, the PTO re-opened prosecution by offering new grounds for rejection. Occasionally the new grounds are suggested by the BPAI but more often they come from the examiner and fall under §101, §103, or §112. The current status of those re-opened cases from my 2006 sample can roughly be broken into thirds: a third of the cases were eventually patented despite the new rejection; a third of the cases are still pending; and a third of the cases were abandoned after the PTO continued to press its case. A handful of the pending cases are on their way to the BPAI for a second go-round.

In all but the rarest of circumstances, prosecution should not be re-opened after an examiner is overturned by the BPAI. During the first round of prosecution, examiners are required to find "the best" references available, and make "the best" possible rejections. But instead, slack examiners take the first piece of prior art meat that slaps them in the face, and stretch it into a bloody mess of rejection, all the while chanting "reject, reject, reject".

If examiners found all of the best prior art up front, and applied the best rejections during the first go-round, cases remanded by the board could be allowed without doubt, and valid patents could issue in a timely fashion. But, finding "the best" reference is never the goal; finding "a" reference quickly is. As long as mediocrity is allowed to reign, and speed is valued over quality, the USPTO will continue to butcher the patent system, leaving applicants gasping for air, even after the BPAI tells them the claims are allowable.

Thanks to Professor Crouch for compiling the numbers.

Full post as published by The Patent Prospector on January 06, 2009 (boomark / email).