Rates for New Rejections on Appeal

Opening up a can of worms is good practice on the lake–not in front of a PTAB judge panel. But when appealing a twice-rejected patent application, a can of worms can very well be opened when the Board newly introduces rejections. These new rejections are not extremely frequent, but understanding the risk of these new rejections is an important part of deciding to take a case on appeal.

In deciding rejections on appeal, the Board has discretion to sua sponte introduce a new rejection to the pending claims. In other words, an appeal is made to the Board seeking to overturn one rejection and in return the Board slaps a different, additional rejection. The Board can also designate existing rejections as new by using a different rationale than the Examiner, but this article focuses on the purely new type of rejection.

These entirely new rejections are introduced somewhat unpredictably. Thankfully, our appeals decisions data can help predict the risks of these new rejections.

A sample of 12,376 decisions over the past four years shows that purely new rejections are relatively rarely applied (1.7%). Data was gathered using Anticipat’s beta research database. It turns out that the Board overwhelmingly prefers to introduce some grounds of purely new rejection over others. Here is the breakdown:

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As can be seen, §112(b) is the most frequent purely new rejection with 78 decisions. Second place goes to §101 nonstatutory subject matter rejections with 74. Next are all the §112(a) rejections with 29. Then obviousness with 16, followed closely by §102 anticipation with 11, and then §112(d) with 3. Finally,  there is one obviousness-type double patenting new rejection.

Some of these numbers are intuitive. As seen from a previous post on the frequency of appealed rejections, §103 rejections are on appeal in 92% of the decisions. Thus it would not be expected that too many more new §103 rejections would be applied by the Board to cases that do not already have them.

Section 101 is an increasingly more frequent new rejection. Many of the newly issued appeals decisions were for cases with appeals filed before the Supreme Court decided Alice v. CLS Bank. The Board appears to be thinking about patent-eligibility much more proactively. In addition to formally issuing a new §101 rejection, we have seen the Board suggesting in its decisions in a number of cases that the examiner consider §101 as a possible new rejection.

Also important to note, even the most frequent of these purely new rejections are fairly rare. The most frequent, §112(b), is newly introduced in only 0.63% of the cases. However, even with this low possibility, getting a new ground of rejection from the Board is still a risk practitioners should consider when taking a case on appeal.

Which rejections are most frequently appealed to the Board?

Examiners typically have a favorite arsenal of grounds of rejection to apply to an application. In other words, not all grounds of rejection are applied evenly. Therefore it is a small wonder that the types of rejections appealed to the Board are non-uniform. Knowing which types of rejections are currently getting appealed (and seeing the results of those appeals) arms the patent prosecutor with an additional weapon against the Examiner. Here is a breakdown of the types of rejections appealed to the Board.

frequency

The big winner is obviousness. In a sample, 92.31% of the cases on appeal included an obviousness rejection. This means that almost every decision on appeal had an obviousness rejection.

Second place is anticipation. In the same sample, 28.08% had a §102 rejection. Since multiple issues can be appealed simultaneously, almost every case was appealing either a §102 or a §103 rejection.

Third place is §112(b), which includes indefiniteness and omission of essential elements. 7.05% of decisions had a §112(b) rejection.

Fourth place is §112(a), which includes written description, enablement, best mode and new matter. In the sample, 6.35% had a §112(a) rejection.

Fifth place is §101 – nonstatutory subject matter. In the sample, 3.57% had a nonstatutory subject matter rejection.

Next is obviousness-type double patenting. While technically 3.32% were on appeal, many of these were not argued by the appellant, suggesting that the appellant was in fact not appealing this particular rejection. Thus, obviousness-type double patenting may be even lower on the list in terms of issues actually being appealed.

Next is §112(d), which was included in 0.24% of the decisions.

Finally are the other §101 grounds, such as lack of utility and statutory double patenting. 0.22% decided on one of these rejections.

Data was gathered using Anticipat’s beta research database. The sample of decisions consisted of 12,358 decisions from December 26, 2012 to January 9, 2017, with the various rejections selected. Decisions that included issues that were only introduced by the Board (new rejections) were then searched for and removed from the data set to only show those decisions that were previously on appeal.

Knowing which rejections get appealed shows three things. First, the types of appealed rejections show which rejections the applicant is willing to bet significant time and money on that the Examiner is wrong. Second, the data show a correlation to the number of applied rejections in Office Actions. The greater the number of appeals, the more frequently the rejection is being applied in Office Actions. Third, if different from the Office Actions, the appealed data can show the likelihood that the area of law is in flux. As we have previously discussed, rejections are not uniformly successfully appealed. Indeed, knowing the results of the different types of rejections on appeal provides a practitioner with predictive analytics to know the likelihood of succeeding on an appeal.

Non-statutory Obviousness-Type Double Patenting Decisions by the PTAB

Non-statutory obviousness-type double patenting.  It is quite a mouthful, and as just as difficult to say quickly three times fast as it is to try to understand when slogging through the relevant sections of the Manual of Patent Examining Procedure (MPEP).  While the name and analysis are complicated, the principle is not–the courts have stated that a patent applicant should not be allowed to patent the same invention merely by filing a second patent application on it later in time.

Reviewing approximately the last six months of ex parte appeals decisions by the Patent Trial and Appeal Board (PTAB), the Board considered this issue in 197 decisions.  In 37 cases, the Board reversed the Examiner’s determination for at least one claim; in 29 of the decisions, the Board’s reversal was for all claims.

The total reversal rate (14.7%) for this issue is lower than that observed over the same period in even non-statutory subject matter cases (see our most recent posts).  We suspect there are likely many reasons for this result.  Here are some possibilities:

  1. Appellants may not be contesting this issue on appeal as it can be relatively easily handled later through filing a terminal disclaimer. This is supported by the large number of summarily affirmed dispositions, meaning the Board affirmed the rejection because the applicant failed to raise any arguments on the issue.
  2. The issue is a narrow, technical one that Examiners and the Board find more black and white.
  3. For many industries (other than biotech or pharmaceuticals), extra patent term is not as commercially important, so many applicants are choosing not to incur additional cost seriously contesting this issue on appeal. Instead, they are fine with filing a Terminal Disclaimer to render the rejection moot.

Current PTAB Decisions of §101 – Nonstatutory Subject Matter

Over the past 6 months, 144 ex parte appeals decisions involving 35 U.S.C. 101 have been handed down that specifically deal with the issue of whether the claims at issue are drawn to statutory subject matter. This subject is the most rapidly evolving area of IP law today, and from our experience one of the most ambiguous in view of what seems to be an “I’ll know it when I see it” approach of the Supreme Court’s two part test set forth in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S.Ct. 2347 (2014).

In the 144 decisions, the Board reversed the Examiner’s finding that the claims were directed to non-statutory subject matter in 37 cases–25.7% of the time.  Of these 37 cases, 36 involved a reversal as to all claims on appeal.

Compared to the reversal rates for obviousness and novelty (see our other posts), the Board is upholding non-statutory subject matter decisions by Examiners much more often.  However, the 25% total reversal rate indicates that even in the unsettled world of section 101, the Board does not agree with the Examiners in 1 out of 4 cases.

The data indicate that the patent-eligibility provision is not being treated by the PTAB as the exception that swallows the rule, which has been the fear of many practitioners observing the steady stream of invalidations on section 101 grounds flowing out of the courts.  Instead, the data indicates that a substantial number of cases are, in its judgment, passing the two part test.

 

Obviousness Appeals before the PTAB

Experience has shown that one of the most difficult issues for patent applicants to overcome during prosecution is a finding the invention is obvious. In 2007, the US Supreme Court freed USPTO Examiners to use many different reasons that one of ordinary skill would combine the teachings of prior art references. Since then, anecdotal evidence from practice suggests that applicants are less successful in overcoming obviousness rejections.

Examiners apply obviousness rejections all the time. How does one make sense of whether an obviousness rejection is reasonable? In the overwhelming majority of cases, one of two scenarios plays out. In the first scenario, the applicant wins after it presents the Examiner with compelling arguments showing that the claims would not have been obvious in light of the applied references. In the second scenario, the Examiner wins by not withdrawing the rejection until amendments are made or forcing the applicant to abandon the application. In a small minority of the time, the case is appealed, which turns out to be one of the most significant measures of the Examiner’s prima facie case for obviousness.

The appeal is a significant measure because both sides are willing to commit significant time and resources into a position. How are patent applicants doing when it comes to reversing obvious rejections on appeal?

The past six months of ex parte appeal decisions from the Patent Trial and Appeal Board (PTAB) show relatively high reversal rates:

In 41.8% of the decisions, the Board reversed the Examiner for at least one appealed claim.

In 32.6% of the decisions, the Board reversed the Examiner for all appealed claims.

The data set included the 3998 total decisions in which 35 USC 103(a) was an issue in an ex parte appeal.  Of the total number of decisions, 1302 were reversed in whole and 369 were partially reversed.  The exact timeframe measured was from 7/25/16 – 1/7/2017. Appeals from reexamination proceedings were not included in the data.

This data indicates that where the issue is obviousness, the practitioner has better than a 1 out of 3 chance that the Board will reverse the Examiner.

35 USC 102 Reversal Rates for PTAB

The doctrine of anticipation under Section 102 is one of the most settled areas of patent law. A reference either discloses the features of a claim or it does not. True, there are nuances to the doctrine, such as inherent disclosure of the applied reference and the broadest reasonable interpretation of claim terms. But for the most part, to support an anticipation rejection, an Examiner must point to where in an applied reference the features of a claim is disclosed and the anticipation rejection should be on solid ground.

Because the doctrine of anticipation is pretty straightforward, one would expect that the frequency that an Examiner is overturned would be relatively low. But the appeals decisions of such rejections tell a surprisingly different story. Looking back at the past six months of ex parte appeal decisions from the Patent Trial and Appeal Board (PTAB) for those decisions involving at least one section of 35 USC 102 reveals that anticipation rejections are among the highest reversed rejections:

In 58% of the decisions, the Board reversed the Examiner for at least one appealed claim.

In 49% of the decisions, the Board reversed the Examiner for all appealed claims.

The data set included the 976 total decisions in which 35 USC 102 (all sections) was an issue in an ex parte appeal. A total of 481 decisions wholly reversed the Examiner on anticipation grounds, and a total of 85 decisions partially reversed the Examiner on anticipation grounds. Appeals from reexamination proceedings were not included in the data.

These data indicate that where the issue is anticipation of the claims, the practitioner has better than 50% odds of having the Board reverse the Examiner.

 

 

Why Analyze ex parte PTAB Appeals Decisions?

Welcome to the Anticipat Blog, where we are serious in analyzing appeals decisions at the Patent Trial and Appeal Board (PTAB). Here are a few reasons why.

We believe that the current patent prosecution process is expensive, inefficient and unpredictable. By sheer luck, an application can sail through to allowance for no other reason than it was assigned to a certain Examiner. For many other applications, several rounds of prosecution can be spent quibbling over egregiously unreasonable rejections before finally receiving an Office Action that should have sent in the first place.

We believe having more data can alleviate the expense, the unpredictability and the inefficiencies of the patent prosecution process. In particular, appeals decisions provide a realistic snapshot of how the Patent Office is ultimately applying patent law. With this data in mind, wasteful rejections can be shortcut rather than unnecessarily amending claims or adding more estoppel to the record.

Admittedly, not all the decisions are binding (only precedential decisions are authoritative while informative decisions provide guidance on the rules and practices of the PTAB). But when these thousands of routine decisions are aggregated, we believe that data set shows the trends and patterns that can be used to calibrate expectations for expense, predictability and efficiency of obtaining a patent.

Despite the promising uses, we think PTAB data (especially appeals decisions data) is currently presented in ways that are either difficult to use or misleading. At Anticipat, we believe in transparently cataloging appeals decisions through granular analysis of each decision. Indeed, predictive power is only possible when the necessary context is gathered by drilling down into the specific issues and outcomes for each appeals decision.

We hope you stay tuned for relevant posts on appeals data, where we will highlight trends and patterns, as well as developments and practice pointers from individual decisions. To subscribe to the daily decisions email, you can signup to the daily recap emails (or to a filtered alerts email) here.