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January 6, 2009

Post-Board Muleage

Examiners consistently rely on baseless rejections, hoping applicants won't realize examiner ignorance, explore examiner incompetence, nor argue against examiner authority. Often, applicants amend or file RCEs, allowing examiners to milk applicants for all the counts they're worth. Rarer is the filing of an appeal brief, which can force examiners to abandon the charade and reopen prosecution. For rejections that actually make it to the board of appeals, and are subsequently overturned by the BPAI, it may be thought that allowance is in store. But Dennis Crouch shone light on the fact that, about 20% of the time, examiner stubbornness lives on, even after being shot down by the board.

Dennis Crouch reports:

To get a sense of how this post-reversal process operates in practice, I looked at a set of 149 decisions from 2006 where the BPAI had reversed examiner rejections. In 80% of cases, the examiner accepted the BPAI decision and did not re-open prosecution. In these cases, a patent generally issued within nine-months of the BPAI decision (median of six months) unless the applicant caused some delay. A typical delay is seen in IBM's Application No. 10/047,116. After winning an appeal on nonobviousness grounds and receiving a notice of allowance, IBM failed to pay the issue fee in a timely fashion. The patent finally issued after the PTO granted a petition to revive.

In the remaining 20% of the reversals, the PTO re-opened prosecution by offering new grounds for rejection. Occasionally the new grounds are suggested by the BPAI but more often they come from the examiner and fall under §101, §103, or §112. The current status of those re-opened cases from my 2006 sample can roughly be broken into thirds: a third of the cases were eventually patented despite the new rejection; a third of the cases are still pending; and a third of the cases were abandoned after the PTO continued to press its case. A handful of the pending cases are on their way to the BPAI for a second go-round.

In all but the rarest of circumstances, prosecution should not be re-opened after an examiner is overturned by the BPAI. During the first round of prosecution, examiners are required to find "the best" references available, and make "the best" possible rejections. But instead, slack examiners take the first piece of prior art meat that slaps them in the face, and stretch it into a bloody mess of rejection, all the while chanting "reject, reject, reject".

If examiners found all of the best prior art up front, and applied the best rejections during the first go-round, cases remanded by the board could be allowed without doubt, and valid patents could issue in a timely fashion. But, finding "the best" reference is never the goal; finding "a" reference quickly is. As long as mediocrity is allowed to reign, and speed is valued over quality, the USPTO will continue to butcher the patent system, leaving applicants gasping for air, even after the BPAI tells them the claims are allowable.

Thanks to Professor Crouch for compiling the numbers.

Posted by Mr. Platinum at January 6, 2009 12:16 PM | The Patent Office


One nitpick about your rant:

A BPAI reversal isn't necessarily them telling the examiner that the claims are allowable, just that the particular rejection used is wrong.

Posted by: VernoWhitney at January 7, 2009 11:01 AM

An important nit VernoWhitney.

Keeping in mind that the BPAI is undertaking the appeal of a singular rejection, or even multiple rejections at a singular point in time, does a reversal of the examiner actually mean that the examiner's shot at providing rejections is over?

Posted by: breadcrumbs at January 7, 2009 1:05 PM

"...does a reversal of the examiner actually mean that the examiner's shot at providing rejections is over?"

No. The position of PTO (mis)management is that the examiner is permitted an unlimited number of opportunities to get it wrong.

I was re-reading some of the comments on the new BPAI rules. Somebody on this site expressed concern over the "sanctions" provisions of the new BPAI rules. However, one commenter noted that was beyond the BPAI's statutory authority, which is limited to reviewing the decisions of examiners.

So if you get hit with sanctions, tell them to take a hike.

Hopefully the new BPAI rules are dead and will never be made final.

Posted by: JD at January 7, 2009 1:35 PM

JD (and anyone),

Is this position of the PTO backed up by law? Does the law actually say one way or another?

Posted by: breadcrumbs at January 7, 2009 1:47 PM


i don't know. but i re-read the BPAI rules and it seemed to me that the only "sanction" the BPAI claimed to be able to make was dismissing an appeal. (i'm not 100% sure of this.) it would seem to me that if your appeal is dismissed then that would be a petitionable matter. if your petition is denied, you should have recourse to an APA suit.

i'm having a hard time believing that the PTO would be foolish enough to take a case that far. my bet is they would cave and reinstate the appeal if appellant agreed to submit some revised response.

Posted by: JD at January 7, 2009 3:32 PM

Patently-O is running a series on Appeal statistics. Would a corresponding set of studies on petitions add any interesting findings?

Posted by: breadcrumbs at January 8, 2009 4:36 AM

JD said:
"No. The position of PTO (mis)management is that the examiner is permitted an unlimited number of opportunities to get it wrong."

Oh boy, was that ever well put.

For instance, there has been some complaining lately about an increase in the PTO re-opening prosecution even after Notice of Issue and payment of the issue fee.

Even after the patent issues the PTO can keep screwing it up. I am now prosecuting a reissue case in which the same examiner who examined the original application has rejected all of the patented claims using 6 new references, all of which were in the art and available the first time he examined the case.

The system is a joke -- more so with some art units than others.

Posted by: Bable Boy at January 8, 2009 9:22 AM

Bable Boy,

Short of the MPEP directive for compact prosecution and other steps desired for examiners to work under (e.g., best rejections, complete rejections), and fully recognizing the irritation created when examiners do not follow these guidelines, are the examiners actually NOT following Law when they act as indicated above?

Is this some sort of (still legal or quasi-legal) "blue-flue" protest?

Can examiners actually be forced to NOT make a joke out of swift and complete prosecution?

Posted by: breadcrumbs at January 8, 2009 3:25 PM


I was taught: first understand what the examiner is doing. Then review the statutes, the case law, and the BAPI decisions, in that order. If there is a disconnect between any of these elements that adversely affects your client's rights, file your appeal or whatever is required.

I don't know what a "blue-flue" protest is, but I think you are asking about dealing with the disconnects between examiner actions and the statutes/case law. I have not yet done it, but ultimately you can file for a writ of mandamus in a US district court to force the PTO to do the right thing.

First, however, you have to exhaust your administrative remedies, meaning, probably, that you have to petition the director. Of course, all the time the clock's running, so the client will likely get screwed with huge legal costs even if he wins. He will also be missing deadlines left, right and center and likely have his case abandoned. I presume the DC has the power to stay prosecution or reverse abandonment to set the whole thing right. There is also the potential for some relief from the Equal Access to Justice Act.

I would be grateful for any comments from more experienced suits on the use of mandamus against the PTO.

Posted by: Bable Boy at January 9, 2009 9:40 AM