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June 12, 2009

Appeal of Appeal

Patent allowances are way down, hence appeals are way up. Since January, the BPAI backlog has nearly doubled to over 10,000 pending appeals. At the current rate of 500 disposals per month, the backlog would take over 20 months to eliminate, not accounting for new appeals that are being filed at a rate 2 1/2 times faster than the Board's disposal rate.

Increasing appeal rates are the expected by-product of the rejection mentality that has overtaken the PTO. Nonetheless, in the past few years, the BPAI has increasingly affirmed examiner rejections. So, either the Board has adopted the PTO's rejection mentality, or there is more to the story.

The bogeyman KSR jumps out as a probable reason for increasing appeals. KSR has created a shade of gray that has made it next to impossible for examiner and prosecutor to agree on what is and what is not obvious. Really, KSR has made it difficult for any two people to agree on obviousness of a particular invention, so it is only natural that examiners and applicants disagree.

If allowance rates begin to increase as the PTO begins to shed its must-reject overcoat, appeals will naturally dwindle. But numbers can be deceiving, and a decrease in appeals should not be construed as applicant satisfaction, nor a repaired patent system.

Posted by Mr. Platinum at June 12, 2009 1:05 PM | The Patent Office


For many products with short commercial lives the long delay in obtaining patent protection can essentially deny the inventors effective patent protection.

Posted by: John Prosecutor at June 13, 2009 3:03 PM

I'm currently going through the apeal process. I have a former patent agent (in private practice now) as the person I hired to file for a patent. He's amazed and disapointed in the way applications are being handled. Deny all claims!! for any reason or come up with one!!!. Which has happened to him. In my case the example (patents) sent to us weren't obvious and he feels it will be a long road (which is costing me more money than he thinks it should, plus the time lost). I guess I want my application to be judged fairly. My patent guy said he was taught not to try and deny all claims but to try and find good ones and judge them fairly.

Posted by: Steve at June 15, 2009 3:33 PM