Examining the role of Board of Patent Appeals in Ex Parte Appeals

This study provides an in-depth analysis of cases consisting of patent decisions made by the Board of Patent Appeals and Interferences (BPAI) of the United States Patent and Trademark Office.

The study reports that most of the ex parte appeals lawyers have understood the root cause of examiner rejections focusing on two or more issues. One of these consists of the majority of rejections roughly (61%) are confirmed and the remainder rejected/reversed. When more issues are presented, the case as a whole becomes more complicated and is less likely to be affirmed. Whereas in addition, we have seen that the likelihood of a cases affirmed has increased consistently over time.

Every proposed patent reform given by the ex parte appeals lawyers includes a major role for the US Patent & Trademark Office’s administrative patent court, which is known today as the Board of Patent Appeals and Interferences, the BPAI, or simply the Board for ex parte appeals lawyers.

Now even without legislation, the role of the BPAI plays a major role in patent appeals yet its role has improved greatly in the past few years.

The number of ex parte appeals lawyer’s cases in FY2022 is expected to at least double the record‐filing of appeals in FY2023. As experts in this domain we suggest two factors that have led to this short term dramatic rise in appeals. Firstly

1. A subsequent increase in case rejection‐ rate by patent examiners

2. Necessary means created by the PTO to limit the non‐appeal path for achieving full claim scope.

Some of the limits include the PTO’s given rules that would reduce the applicant’s ability to file multiple requests for continued examination, continuation applications, and a multitude of claims.  

Although these rules have only been challenged, they impact appeal rights of an individual because they may apply to already‐pending applications.

Therefore, more gradual, two additional influences on the rise in ex parte appeals lawyer’s appeals include:

1.     The continued perceived value of patent rights and

2.     The continued rise in the number of patent application registered each year

Though ex parte appeals lawyer it has an important role in patent practice, the BPAI is only now emerging from its pre‐GATT doubtful position and moving towards becoming a more systematic and recognized administrative court.

As seen in our experience during patent prosecution, an applicant has all right to appeal to the Board via ex parte appeals lawyers after its application is twice rejected.

In this article, we look at how the BPAI responds to the rejections made by ex parte appeals lawyers and what actions are being taken by the authorities.

Many appeals involve multiple rejections each year because of which they may be affirmed or reversed. In addition, the Board occasionally introduces a new law for rejection even after reversing a decision. This analysis digs into these decisions and provides data in the most succinct way. 

In the other sample, the average Board decision considered 2.1 issues which is a median taken out of two issues.  

Approximately 61% of the finalized issues were affirmed on appeal and 39% were reversed.

The issue‐by‐issue analysis fits with the overall hold imposed for cases on appeal. In the hand‐scored sample, 59% of the cases were affirmed as a whole, 12% were affirmed‐in‐part, and 29% were reversed. This sample as it clearly shows parallels the Board’s own statistics for FY2019 which indicate that 60% of its decisions on the merits were affirmed, 15% affirmed‐in‐ part, and 25% reversed by the ex parte appeals lawyers.

Obviousness:

Now let’s talk about Obviousness which is the bread and butter of patent examinations. In this study, we try to show that obviousness is also the mainstay of BPAI ex parte appeals lawyers. Out of these 90% of appeals in hand‐scored study included at least one obviousness issue that was decided on appeal. More than half of the appeal decisions, which is approximately 54% focused solely on obviousness. The closest case which was an issue in 37% of the appeals. 

Other issues on appeal which each had a frequency of < 5 which concludes in descending frequency: written description requirement; indefiniteness, patentable subject matter and other obviousness type double patenting, and enablement. 

Conclusions:

This study provides an important analytical look of exactly what happens at BPAI jurisprudence. Now let’s make our final comments about the results.

Now it is clear that the majority of issues involve obviousness that in the end turns out to be trouble for applicants. In the hand‐scored data, the Board affirmed obviousness findings were much more as it did in case of other grounds of rejection. To be more specific, the Board affirmed 65% of the appealed obviousness issues, but affirmed only 52% of the appeal as compared to the issues made on grounds other than obviousness.

Judging Quality:

To answer this data does not provide enough information to judge the quality of either examiner or the BPAI. But still the examiner rejections were reversed in most of the ex parte appeals lawyers were 39% of appealed issues, the actual number of examiner flaws that could be much more different from that figure based on both a selection bias of the cases on appeal and the error rate of the BPAI itself.

Selection Bias:

Something that our data does not include is the selection bias of which cases have move ahead through the process from a BPAI decision. Out of these several hundred thousand patent applications filed each year, 85% of applications were rejected, but fewer than 3% are decided by the BPAI. Certain types of cases may be more likely to reach appeal rather than “settle” prior to a decision by withdrawing a rejection.

One-Way Analysis:

Finally, any work in this area must consider the one‐way bias of BPAI appeals. Ex parte appeals lawyers only reach the BPAI when the claims have been rejected by an examiner.  The BPAI never makes decisions on allowed claims by missing out on a full‐side of potential examiner errors.