Patent Law

Appeal of Appeal

By Gary Odom and Jordan Kuhn

Patent allowances are way down, hence appeals are way up. Since January, the BPAI backlog has nearly doubled to over 10,000 pending appeals. At the current rate of 500 disposals per month, the backlog would take over 20 months to eliminate, not accounting for new appeals that are being filed at a rate 2 1/2 times faster than the Board's disposal rate.

Increasing appeal rates are the expected by-product of the rejection mentality that has overtaken the PTO. Nonetheless, in the past few years, the BPAI has increasingly affirmed examiner rejections. So, either the Board has adopted the PTO's rejection mentality, or there is more to the story.

The bogeyman KSR jumps out as a probable reason for increasing appeals. KSR has created a shade of gray that has made it next to impossible for examiner and prosecutor to agree on what is and what is not obvious. Really, KSR has made it difficult for any two people to agree on obviousness of a particular invention, so it is only natural that examiners and applicants disagree.

If allowance rates begin to increase as the PTO begins to shed its must-reject overcoat, appeals will naturally dwindle. But numbers can be deceiving, and a decrease in appeals should not be construed as applicant satisfaction, nor a repaired patent system.

Full post as published by The Patent Prospector on June 12, 2009 (boomark / email).