Patent Law

Unappealing

By Gary Odom and Jordan Kuhn

More than ever, patent prosecution is a gambler's game. As Admiral Adama in Battlestar Galactica observes: "sometimes you have to roll the hard six." In prosecution, facing an objectionable rejection, appeal. Professor Dennis D. Crouch has taken a cold-eyed look at rejection rates for BPAI appeals. Not a savory prospect. The hard six is a very hard roll, particularly when playing against Obzilla.

The rejection regime of the past few years has resulted in an appeal-all kickback from prosecutors. That regime is taking its toll on the BPAI. The number of appeals is expected to double in 2009 from 2008, to a record 6,400. Professor Crouch attributes "two factors have led to this short term dramatic rise in appeals: (1) an increase in rejection rate by patent examiners; and (2) attempts by the PTO to limit non-appeal avenues for achieving full claim scope."

Professor Crouch:

Most appeals from examiner rejections focus on two or more issues. [2.1 issues was the average.] Of those, the majority of rejections (61%) are affirmed and the remainder reversed. When more issues are presented, the case as a whole becomes more likely to be affirmed-in-part.

87% - 90% of cases decided an issue of obviousness. Only 4% of appeals consider neither obviousness nor novelty.

The Board is authorized to offer new grounds for rejection, and did so in about 4% of the cases in the hand-scored study. The most common new ground was for obviousness.

More than half of the appeal decisions (54%) focused solely on obviousness. The closest runner-up issue - anticipation - was an issue in 37% of the appeals. Other issues on appeal (each with a frequency of < 5%) included in descending frequency: written description requirement; indefiniteness, patentable subject matter, obviousness-type double patenting, and enablement.

The fact that the majority of issues involve obviousness spells trouble for applicants.

Biotechnology and organic chemistry (TC 1600) are an outlier: 18% of those BPAI decisions are focused on issues other than prior art.

The non-objective standard of KSR renders obviousness a pandemic killer. Otherwise, an examiner is far more often found wrong than right, a figure that indicates general examiner incompetence, for sticking with rejections that are not well-founded.

Obviousness rejections are more likely to be affirmed than are other types of rejections. Cases that discuss neither obviousness nor novelty are reversed in 74% of cases.

The outcome upshot is shown by Table 1. "10% of cases that were affirmed included one or more individual issues that were reversed." This occurred where an examiner piled on the rejections, both anticipated & obvious over multiple prior art references, and while reversing the most outlandish rejection, the Board need only agree with the examiner on one issue to down the application.

In the case of multiple issues, the BPAI tends to split the baby from the bathwater. "As more issues are presented, the likelihood of a split decision (affirmed-in-part) rises dramatically while the likelihood of the case being completely affirmed or completely reversed drops."

The good Professor points out that examiner error on rejected claims is but a partial story. The other side of the examiner error coin is allowing claims that should not have been. That appeal is more often than not heard in the courthouse.

Full post as published by The Patent Prospector on June 23, 2009 (boomark / email).