Update on ex parte PTAB Appeals Reversal Rates: High Reversal Rates Maintained Except for 101 – Nonstatutory Rejections

About six months ago, the AIPLA ex parte subcommittee published a paper that showed the reversal rates across various grounds of rejection. Some of the findings were very surprising, including over 50% reversal rates for Section 102 and 112 rejections. Here, we provide an update to this paper, which doubles the data set from the time of the AIPLA publication. We find that the reversal rates have not budged from these initial rates, outside of a downtick in reversal rates for Section 101 non statutory rejections. This signals that the surprising results were not a sample size anomaly.

table

Section 101 – Non statutory

Of the 629 decisions, 130 were reversed and 7 affirmed-in-part. This translates into 21% pure reversals and 22% at least partial reversals.

Section 102 – Anticipation 

Of the 2187 Section 102 decisions, 1065 were reversed and 177 affirmed-in-part. This translates into 49% pure reversals and 57% at least partially reversed.

Section 112(a)

Enablement

Of 203 decisions, 104 were reversed and 8 affirmed-in-part. This translates into 51% reversed and 55 at least partially reversed.

New Matter

Of 27 decisions, 13 were reversed. This translates into 48% reversal rate.

Written Description

Of 531 decisions, 276 were reversed and 19 were partially reversed. This translates into 52% reversal rate and 56% at least partially reversed.

In total, out of 761 decisions, 393 or 52% were reversed and 55% were at least partially reversed.

Section 112(b) – indefiniteness

Of 806 decisions, 390 were reversed and 34 were partially reversed. This translates into a 48% reversal rate and 53% at least partially reversed.

Section 112(d)

Of  38 decisions, 16 were reversed and 1 was partially reversed. This translates into a reversal rate of 42% and 45% at least partially reversed.

Section 103 Obviousness

Of 9329 decisions, 3139 were reversed and 907 were partially reversed. This translates into a reversal rate of 34% and an at least partial reversal rate of 43%.

Obviousness type double patenting

Of the 418 decisions, 67 were reversed and 13 were partially reversed. This translates into a 16% reversal rate and a 19% at least partial reversal rate.

Data Set

The above data was pulled using Anticipat Research in the range of 7/25/2016 to 7/25/2017. You can perform legal research for these grounds of rejection and others on Anticipat Research. Click here for a free trial to give it a try.

Conclusion

The past six months have shown that the high reversal rates for Sections 102 and 112 rejections reported previously are here to stay. While Section 102 reversal rates dropped some, 49% is still very high. Given the large number of decisions, especially for obviousness, it is interesting to note that the reversal rates are as stable as they are.

Meanwhile, the past six months have experienced far fewer 101 non statutory rejections. Specifically, a reversal rate drop of 4% based on six months of additional decisions seems significant.

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2 responses

  1. Pingback: How the biggest patent firms (Finnegan, Fish, Knobbe) do on appeal | Anticipat Blog

  2. Pingback: The PTAB backlog for ex parte appeals continues its plunge | Anticipat Blog

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