There are several good reasons for not appealing a patent application, even in the absence of progress with the Examiner. One such reason stems from the lengthy PTAB backlog—the period of time it takes for the Board to decide appeals. By the time it takes for the Board to overturn an Examiner’s rejections, investment and PR opportunities directly tied to a patent issuing can wither. Not to mention, a lot can change within the business during this time, such as the viability of stopping infringing activity. So it is often desirable for an applicant to move fast to issuance. And outside of post-grant trials, the PTAB has not been known for speed.
But as the USPTO has aggressively hired PTAB judges to meet demand for post-grant trials, an interesting side-effect has been that the backlog for deciding appeals has fallen to historic lows. For this reason, filing an appeal can result in a disposition sooner than you might think.
As shown in the most recent statistics by the USPTO, pendency of decided appeals is considerably lower compared to last year. See below figure. As can be seen, each tech center that decides patent application appeals saw a substantial reduction in backlog from the previous year. Some technology centers, including electrical and computer arts, are experiencing almost 50% reductions in the backlogs in a single year’s time.
The PTAB backlog is calculated from the time that the appeal is forwarded to the Board until a decision is made. Another way of measuring the appeal time is the total amount of time from the notice of appeal. For this, simply add the many more additional months that account for the time it takes to file the appeal brief, wait for an Examiner’s Answer, and file a Reply Brief, if applicable. Assuming that these steps that precede the appeal forward take less than a year, these data show that for even the slowest tech centers (or most busy with the number of appeals), the total appeal time for most applications will be under three years total.
These backlog reductions at the PTAB in only one year’s time are significant. Compared with data from FY2013 (before the AIA was even enacted), current pendency is significantly lower in every tech center. See below graph from FY2013.
The PTAB shows no signs of slowing the reduction in the backlog. We will continue to monitor whether the backlog continues to decline.
In conclusion, the most recent USPTO statistics show that an appeal can relatively speedily get resolved (less than two years from notice of appeal in certain technology centers). So rather than filing one or more RCEs with further amendments, an applicant could consider an appeal for potentially a broader claim set. As we’ve previously discussed, if successful, the applicant gets the patent term adjustment back in the form of C-delay. Sometimes, it pays to be patient.