Appeals "Skyrocket" at the USPTO
Law.com issued an article today confirming what most practitioners have known for a while - patent examination has become a stingier process, resulting in more appeals at the BPAI. Over the past year, the PTO reports that appeals have spiked 70 percent. From October through May, 10,870 patent appeals were filed, which is a sharp increase from 6,385 from the previous year.
While the number of appeals increase, the levels of success have not - in fiscal year 2008, the BPAI allowed 44 percent of patents that came before it, which is down from 66 percent five years ago, and 71 percent at the start of the decade.
According to the article,
PTO spokeswoman Jennifer Rankin Byrne said in a statement that a "significant increase" in the ranks of patent examiners has led to more examinations and "more final rejections which could result in an appeal." Examiners will have less time to process applications and hand down rejections, at least in the short term. The PTO suspended overtime pay from June 21 through at least the end of the fiscal year.One interesting part of the article deals with the notion that the level of appeals is "boosting back-end work for lawyers at the agency's appeals board" (never mind that in May, Law.com wrote an article on "the trend of companies abandoning patent applications that have already been filed"). According to one attorney interviewed for the article,* * *
Byrne of the PTO denied that the PTO's current philosophy is to reduce the number of issued patents. "There is not an agency policy to have examiners reject claims without merit," Byrne said. "The examination of applications is constrained by controlling case law. It is this controlling case law that examiners use as guidance in making rejections."
Complex appeals cost tens of thousands of dollars . . . [some firms allege to be] charging $6,000 or $7,000 to $20,000 to prepare an appeal brief . . . rates [can typically] run at an average of $600 per page, which adds up to $18,000 for a 30-page appeal brief.Read the article in its entirety here (link)
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Who in the world charges 'per page' in the patent world?
A complex appeal will cost thousands, of not tens of thousands of dollars. But it has nothing to do with the length of the brief, and everything to do with the number and complexity of the rejections being addressed.
I tell my client to expect about 2-3x the cost of an office action response for the same number of rejections. Primarily because in an appeal brief we will often address dependent claims instead of letting them stand or fall with their parent claim.
Probably not charging per page, but per hour and recalculating to get that number.
"Byrne of the PTO denied that the PTO's current philosophy is to reduce the number of issued patents. "There is not an agency policy to have examiners reject claims without merit," Byrne said. "The examination of applications is constrained by controlling case law. It is this controlling case law that examiners use as guidance in making rejections."
Lies. Lies. Lies.
The "affirmance rate" that the PTO loves to report so much as evidence of "record breaking quality" is more lies, lies, lies.
As Ron Katznelson reports, there were 23,000+ appeals filed in FY 2008, and only about 6,500 were docketed to the Board. The rest were re-opened because the rejections would not withstand scrutiny.
The PTO lies. It lies. And then it lies some more.
I've noticed more problems with rejections over the past couple of years. Some fairly ridiculous rejections on a number of occassions and some examiners seem to completely ignore some of the the limitations found in independent claims, and sometimes even the base claims even after they are highlighted from a previous response.
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