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Do BPAI affirmance numbers give an accurate picture of "quality"?

By Lawrence B. Ebert, Esq.

In a post --Appeallusion--, Patenthawk starts with data on BPAI decisions that appeared on Patently-O, but quickly gets into
the underlying gamesmanship of "counts" in examination practice at the USPTO. Contrary to a widely-circulated urban legend from the patent reform folks [that examiners get more points for mindless allowance], the system gives an incentive for brief final rejections.

The point of the argument -->

Forgetting for a minute about compact prosecution, let's walk a short mile in an examiner's shoes. An examiner writes up a non-final rejection, rejecting all the claims over the prior art. The attorney responds and traverses all of the rejections. Let's assume the attorney makes some valid arguments and the examiner agrees that the rejections should probably be withdrawn. The examiner still has three options: 1) withdraw the rejections and allow the claims; 2) withdraw the rejections and find new prior art to write a second non-final rejection; 3) maintain the rejections and issue a final office action. Option 1 usually won't fly based on the current management mentality of "reject, reject, reject." Option 2 will chew through numerous hours for zero count. Option 3, although also zero count, takes less than an hour.

So, option 3 it is. Worst case scenario: the applicant files a notice of appeal, the examiner is forced to withdraw the final rejection, and then at that point allow the application or find new prior art. In this case, the only loss is the hour or so it took to write up the final rejection. Best case scenario: the applicant abandons the application or files an RCE. Sweet! Free count! And the examiner saved countless hours.

The relevance to the Patently-O piece -->

This constant gambling by examiners cause many notices of appeal to never result in an appeal that reaches the board. Additionally, the dice rolling skews the board affirmance rate, masking actual examination quality, but reaps sweet numbers for the PTO to parade to the public.

**
See IPBiz post Eleven easy pieces for obviousness under 103?

**
Separately, see Patent Reform in Congress by Ted Frank, wherein Mr. Frank gives us a pre-cite to the upcoming
Bessen/Meurer book -->

Since the late 1990s, patent litigation costs have outstripped patent profits.[9]

9. Id. (citing JAMES BESSEN AND MICHEL J. MEURER, DO PATENTS WORK (forthcoming 2008)).

IPBiz notes that there ought to be a law against citing to a work citing unpublished urban legends. By the way, reference [8] was Michael Fitzgerald, A Patent Is Worth Having, Right? Well, Maybe Not , N.Y. TIMES, Jul. 15, 2007., already discussed within IPBiz. This also sort of reminds one of how some patent reformers cited to Quillen and Webster for a 97% patent grant rate, even though no such thing was in Quillen and Webster. Patent reform is filled with urban legends and "facts" which aren't really true.

Full post as published by IPBiz on March 07, 2008 (boomark / email).