While Chief Judge of the PTAB, David Ruschke took pride in the PTAB’s work in reducing the backlog of ex parte appeals. And for good reason. As we previously reported, the historically long backlog for appeals plunged during his leadership. But after Ruschke stepped down from his position, the backlog is going back up.
The USPTO recently released the December 2018 ex parte statistics, showing some significant changes in appeal backlog from the previous year.
As can be seen, almost every tech center experienced an increase in the pendency of decided appeals from the prior year. The two exceptions are 3600, home to business methods and software-related tech, and 3700, home to medical devices and mechanical tech. Looking at similar graphs of previous months, there are a few ways to interpret these data.
The first interpretation for the overall backlog increase is that PTAB judges are focusing their production work less on ex parte appeals. Assuming the number of judges has not considerably changed across tech centers, we can see the production difference most apparently in the number of total decisions. In 2017, there were about 11,899 ex parte appeal decisions whereas in 2018, there have been 8,928 to date. One caveat to the 2018 numbers is that as of January 16, 2019 the USPTO is still delayed in rolling out all of December 2018’s decisions. But the total number for 2018 should only shift upward by a few hundred decisions at most. This means that 2018 saw judges deciding fewer appeal decisions than in 2017.
We may assume that the impressive backlog reduction under Ruschke was the exception rather than a sustainable norm. With the ramping up of hiring PTAB judges to accommodate post-grant trials involved training new PTAB judges, which required a period of judges to work on ex parte appeals. Speculating, the PTAB may have seen fit to shift priorities, especially with the ex parte appeal backlogs at historic lows. In August of 2018, Scott R. Boalick became acting chief judge after Ruschke stepped down to become a special adviser to the USPTO patent division. It is unclear whether Boalick has the same enthusiasm for reducing backlog as Ruschke or whether he is interested in other issues, such as quality of decisions.
Further, the change in backlog may be the simple result of monthly fluctuations. But going back to previous months, some tech centers do not seem like a flash in the pan. For example, tech center 1600 increased a significant 4 months each of the three months, fundamental examination disputes being appealed specific to the technology in these tech centers might be at issue. An increase of pendency of decided appeals can be the result of increased appeals. This can indicate a measure of perceived unreasonableness by Examiner rejections assuming applicants appeal at a greater frequency with more unreasonable rejections. What exactly is the specific reason for this consistently higher backlog in TC1600? It’s unclear. It could stem from great uncertainty regarding subject matter eligibility in the diagnostics space.
Another tech center with a skyrocketed backlog is 2900, home of design patent applications. This was consistently and significantly higher for three consecutive months including December 2018. True, the sample size for design appeals is much smaller than other tech centers so the much higher standard deviation contributes to increased flux. See below.
But at the same token there could be grounds of rejection specific to design applications that are getting appealed. The trickiness here is that since design applications are not published, the e-Foia page does not publish these appealed decisions so Anticipat currently does not keep track of them.
One tech center that consistently continued to decrease its backlog was 3600, home of software/business method applications. At a current backlog of 17 months, it makes the strategy to pursue an appeal ever more appealing, especially in the face of difficult rejections with no progress with the examiner in sight. Knowing the backlogs in real-time for an application you are pursuing can arm you with the information you need to make the best patent prosecution decision.