US BPAI Appeal Terms and the Impending Crisis

According to Professor Crouch at Patently-O, in the first two weeks of September 2007, the U.S. Board of Patent Appeals and Interferences released over one hundred opinions. Bsed upon his review of a sample of thirty of these applications,

On average it took just under 18 months (542 days) from the filing of the appeal brief until a decision was reached by the BPAI. The mean hides a wide range of delay: From a minimum of 9 1/2 months to a maximum of 44 months. (Standard Deviation 255).

Most of the time delay is not attributable directly to the BPAI. Rather, most of the delay occurs between the date that the appeal is filed and the date that the case is submitted to the BPAI. On average, it took about 11 months (328 days) to ‘complete briefing.’ Typically, that time period involves the applicant’s brief; followed by an
examiner’s answer; and finally a reply brief. Once the case is submitted to the BPAI, the average decision time was seven months (214 days).

. . . As I noted earlier in 2007, only fewer than of appeals are pushed-through to the end. [Link] In many cases, Examiners withdraw rejections or applicants file RCE’s with new claims. These calculations also do not include time delays associated with BPAI rejections for improper appeal brief form. Instead, I only began counting once a ‘proper’ brief was filed. In an earlier study, I showed that approximately 25% of appeal briefs are rejected on procedural grounds as either defective or incomplete. [Link]

"With the elimination of unlimited continuation and RCE filings, it is expected that many more appeals will be taken by attorneys who formerly would refile applications after final rejection in an attempt to work out a compromise with an Examiner vis a vis taking an appeal," adds Professor Wegner. "If the new rules were to result in just one or two more appeals taken the full route to decision for each examiner, this would double or triple the number of appeals, choking the capacity of the Board to keep current."

The Good Professor also offers a comparative solution to the impending crisis:

In a nutshell, Japan places a premium on the back end of the examination process, as manifested by 30 % of its workforce being involved in appeals and post-grant review – versus one (1) % in the United States. Japan benefits from earlier parallel examinations in the United States and avoids the one-size-fits-all front end focus of the PTO. As a result, the United States has a patent examination corps 320 % the size of Japan. The Japanese focus upon legally talented fresh graduates with B.S. and M.S. degrees is in sharp relief to the American focus on gaining industry-experienced workers – often with more than ten years out of college – but with a Ph.D. rather than a law degree or any established legal aptitude. The attrition rate is so high that in the last two to four years the resignation or retirement rate at the U.S. PTO has exceeded the size of the entire Japanese patent examining corps.

Read more in Wegner's paper on "Patent Reform in the 110th Congress: Lessons from Tokyo."