Tech center directors currently use their own appeal metrics for assessing examiners, but should use Anticipat data instead

The USPTO has a vested interest in knowing how well its patent examiners examine applications. It tracks production, efficiency and quality. Even though quality examination has always been tricky to measure, one metric comes pretty close: an examiner’s appeal track record. And while tech center directors have had access to this data, until recently this has been difficult to access. Here we explore the known gaps of how this metric is being used at the USPTO.

According to sources at the USPTO, directors–who oversee each technology center–have access to their Examiners’ appeal track records. The more an Examiner gets affirmed by the PTAB on appeal, the more reasonable the Examiner’s rejections, the theory goes. This means that directors can evaluate examiners based on how often an examiner gets affirmed.

The acceptable examiner appeal track record appears to depend on the director. An Examiner’s appeal track record with an affirmance rate significantly below the director’s average will attract attention. The USPTO as a whole has an affirmance rate at the PTAB that hovers around 60%. Different art unit groupings vary significantly from this global affirmance rate. Anything consistently lower than an affirmance rate average can put a question mark on the Examiner’s examination quality.

Even without knowing the specific contours of the acceptable affirmance rate at the USPTO, a look at the numbers can give an Examiner a general idea how well he/she is doing. This can help an Examiner proactively find out about these metrics before getting into trouble to guide his/her appeal forwarding strategy (Full disclosure: As a quality control metric, examiners do not appear to get punished in any way for being reversed).

While the USPTO’s appeal outcomes are available from other patent analytics services, they only use the USPTO’s outcomes that are based on how the overall decision was decided. See below.

appealrate

This decision-based outcome doesn’t communicate the issues that are causing examination problems (which issues are being reversed at the Board). By contrast, Anticipat provides a detailed breakdown of all an Examiner’s decisions. Examiners can thus easily pull up all of their appealed decisions and quickly see on which issues they were affirmed/reversed/affirmed-in-part.

On top of Examiner-specific data, Anticipat can identify rejections reversal rate outcomes across art units. For example, take obviousness rejections. Using Anticipat’s Analytics page for looking up over the past couple years in art unit 2172, in the computer/electrical arts, the pure reversal rate is about 18%. See blue sections of graph. This is lower than the tech center reversal rate of 27% and lower than the global USPTO reversal rate for this time. 2172

On the other hand, art unit 1631 in the biotech arts has a much higher reversal rate with a decision pool of about the same number. Specifically, art unit 1631 has a reversal rate of 43% for the past couple years. This is greater than its tech center reversal rate in 1600 of 26%.

1631

Finally, art unit 3721 in the mechanical art has an obviousness reversal rate much higher than both of the above examples. Specifically, 3721 is wholly reversed during the past couple years at 53%. This is higher than the tech center reversal rate of 44%, which is in turn higher than the global USPTO level. 3721

The granularity of appeal data can show what currently available data for appeals does not show: whether an Examiner is substantively doing a good job of examining applications. There are three reasons this is important for meaningful analysis of the metric.

First, as we’ve previously reported, the USPTO labels a decision as affirmed if only one rejection sticks to all pending claims. So the USPTO/director statistics and other patent analytics websites that provide this statistic of affirmance rate lacks the proper context. And without such context, the appeal outcome is an incomplete and even misleading metric.

Second, not all of the responsibility for low affirmance rates falls on the Examiner. For example, the two other conferees at the appeal conference can push applications to the Board that don’t have good rejections. But the Examiner-specific metric is a good starting point for any deviations to any norms. Anticipat allows for other Examiner lookups (including the SPE) to determine conferee track records.

A third reason for variance in Examiner appeal outcomes stems from the judges’ label of the outcome. While it is somewhat rare for a decision to have a newly designated rejection, it does happen. And as Bill Smith and Allen Sokal have recently pointed out in a Law360 article, decisions that have new designations are inconsistently labeled as affirmed or reversed. Sometimes the panel will reverse the Examiner’s improper rejection, but introduce a new rejection on that same ground with their own analysis. Other times the panel will affirm the Examiner’s improper rejection with its own analysis and be forced to designate the rejection as new. These small differences in patent judges’ preferences can impact an Examiner’s appeal profile.

Anticipat makes up for these shortcomings by providing greater context to outcomes and grounds of rejection. You can look at judge rulings in a particular tech center and identify patterns. For example, you can see whether panels tend to reverse or affirm when introducing new rejections.

Other valuable information, such as art unit and tech center data, can predictively guide an Examiner’s chances of taking an appeal to the Board. If a particular rejection consistently gets reversed on appeal, at the pre-appeal conference or appeal conference this knowledge can guide strategy to forward to Board based on the specific rejection at hand. Especially if the appeal consists of only a single issue.

With this increased granularity in appeal data there are only more questions to be answered. These specific questions currently have less clear answers. For example, to what extent are greatly disparate appeal outcomes the result of differing quality of examination? To what extent are Examiners across different tech centers evaluated based on appeal outcomes? Is there a point that an Examiner is considered to need improvement based on appeals outcomes? Could appeal outcomes–even if they include many reversals–affect the Examiner’s performance review? Likely not. But a better lens could prompt questions about disparate reversal rates across art units.

PatCon8 Conference: State of Patent-Eligibility of Medical Diagnostics Not Good

The eighth annual PatCon hosted by the University of San Diego School of Law included a wide range of speakers and presentations. Perhaps due to the largely academic audience, participants openly disagreed on various points. But one point had almost universal consensus: patenting medical diagnostics in the US is very bleak due to patent-eligibility. And it’s unlikely to change any time soon.

Since the Supreme Court decided Mayo v. Prometheus in 2012, the USPTO has shown a sharp decrease in finding good diagnostics claims to be patent-eligible. One session in particular focused on this: “Patentability of Medical Diagnostics” on March 2, 2018. This panel included Dirk van den Boom, CEO, Juno Diagnostics, former CEO of Sequenom; Brian Sun, Director, Intellectual Property, Prometheus Laboratories;  Matthew Bresnahan, Partner-Elect, Wilson Sonsini; Donna Shaw, UC San Diego;  Prof. Joshua Sarnoff, DePaul University School of Law; Prof. Jeffrey Lefstin, Hastings School of Law. We report on this session.

First off, Matthew Bresnahan shared statistics of decreased allowance rates and decreased filings in the 1630 art units. Matthew stated that the problem with diagnostics claims is not getting allowed claims, but rather getting good claims that do not suffer from divided infringement issues. He pointed out that the lone example claim deemed patent-eligible in the USPTO’s subject matter guidelines has a divided infringement issue. As a solution to fixing the patent-eligibility of diagnostics, Matthew suggested that the USPTO provide a “good” example claim in the guidelines that is deemed patent eligible.

Next, former CEO of Sequenom, Dirk van den Boom, talked about his experiences of having the courts take away all his company’s core IP based on patent-ineligibility. It was not planned, according to him. It was also not pleasant.

At one point audience member Mark Lemley tried to maintain an “All is well at the USPTO” attitude by pointing out that overall filings and grants in tech center 1600 may be up. Even if such data exists, which it wasn’t immediately clear to this correspondent, panelists agreed that certainly the types of claims currently granted are much different/worse than previously or in other tech centers.

Prof. Joshua Sarnoff then talked about a need to study the effects of the US choosing not to prioritize the patenting of diagnostics the same way that other countries do. To Professor Sarnoff, whether the US is correctly pursuing this policy is somewhat beside the point. With the proper data of what the patent-eligibility conundrum of diagnostics is doing to the economy, patent stakeholders can be in a better to know what to do.

While this session raised important problems about diagnostics, the solutions seemed unsatisfying. Outside of providing another patent-eligible example claim in the USPTO guidelines and gathering more data, there was some discussion on amending Section 101. For example, IPO and AIPLA proposals to amend Section 101 were generally deemed unrealistic in today’s congressional climate. Perhaps a more narrowly tailored amendment. But overall, all the solutions discussed seemed overly hopeful to change the status quo.

One solution not discussed relates to waiting for appeals currently percolating up the system. This blog has pointed out that the PTAB is currently doing a great job of reversing Examiners in tech center 1600 on Section 101, compared to other tech centers. This suggests that these Examiner rejections are not supported by precedent, and so the Board overturns. If the Board is showing an increase in not finding support in the case law, Federal Circuit panels will likely also find this with other cases. As some other diagnostics cases come up to the Federal Circuit, perhaps it is possible that a case can be distinguished over Mayo but still falls within the area of patent-eligibility.

Below is a photo of Carter G. Phillips, who did a wonderful job of opening the conference.

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Recent pattern of PTAB cutting corners: Decide Section 101 and avoid deciding other pending grounds

We have previously reported that PTAB judges, like Examiners, are measured by a quota-based production system. For PTAB judges, the quota is based on the number of decisions they author. It is no secret that this production system prompts some Examiners and PTAB judges at times to get creative with practices to most easily meet their quotas. Here, we look at some recent decisions that show a pattern of PTAB judges deciding a Section 101 rejection without looking to the remaining pending grounds on appeal.

First some context. The Board has discretion not to reach all pending rejections on appeal, which makes sense. For example, ex parte appeals decisions often times do not reach prior art rejections after finding that the claims are indefinite because, e.g., the scope of the claims cannot be determined. But for the overwhelming majority of cases, PTAB judges decide all pending rejections on appeal (unless not argued by the appellant). This practice encourages compact prosecution, something that the USPTO very much favors. So this discretion to avoid deciding grounds of rejection is very rarely used.

But this discretion is sometimes used and as shown in two recent Board decisions, it can also be abused. For example, judges have recently affirmed a “Section 101 – patent-ineligibility” rejection and then declined to reach other pending rejections (either prior art rejections or 112 rejections).

The first decision is Ex Parte Snow (PTAB Feb. 8, 2018), deciding Section 101 and asserting that it therefore need not go to the pending Section 103(a) rejection. To support this action, the panel relied on two cases (one Federal Circuit and one precedential PTAB decision). From the decision:

Because claims 1—33, 35, 37, and 39 are directed to patent-ineligible subject matter, we do not reach the prior art rejection of those claims. See In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009) (declining to reach the prior art rejection when claims are barred at the threshold by § 101); Ex parte Gutta, 93 USPQ2d 1025, 1036 (BPAI 2009) (precedential) (same).

It is true that In re Comiskey declined to rule on a Section 103(a) rejection after concluding that the claims were directed to patent-ineligible subject matter under Section 101 (both the original decision in 2007 and the en banc decision). Interestingly, the Federal Circuit in In re Comiskey newly applied the Section 101 rejection without needing to go to the Section 103(a) rejection. The Board had only reached the Section 103(a) rejection, affirming the Examiner. Thus, it does not appear that the Federal Circuit was attempting to establish precedent for the Board to not reach pending prior art rejections when a Section 101 rejection is at issue. Instead, it merely did not need to go to the Section 103(a) because it vacated and remanded for the Board to pick this up.

The other case cited was a precedential case Ex parte Gutta. In Gutta, the Board declined to reach prior art rejections by citing to Comiskey as well as a 1942 case: In re Rice, 132 F.2d 140, 141 (CCPA 1942) (finding it unnecessary to reach rejection based on prior art after concluding claims were directed to nonstatutory subject matter).

Here, Gutta was an expanded panel that included then Chief-judge and vice-Chief judge. Similar to the Federal Circuit panel in In re Comiskey, it’s possible that this PTAB panel was a special case. In other words, maybe they didn’t want to mix another issue (prior art rejection analysis) with what they wanted to establish as precedential.

Said differently, the Gutta decision does not appear to have been trying to establish that if the Board finds that the claims are patent-ineligible subject matter, then there is no need to reach prior art rejections. Indeed, if all panels did that, then we would start getting into more subjective appeal analyses, where the Board favors ruling on Section 101 so that it need not address other issues. And by not addressing prior art rejections, doesn’t it seem like the panel is implicitly communicating that the application is a lost cause–no matter how the claims are amended? Section 101 should not be used as a tool by the Board to pick and choose eventual patent grants.

Indeed, a goal of the USPTO should be compact prosecution. Just because an appellant loses Section 101 on appeal is not the end of the road. It is possible that after the appeal, the applicant amends the claims to clear the Section 101 rejection. Other less likely scenarios are that a request for rehearing is granted or a Federal Circuit appeal vacates the Board’s findings. In all three of these scenarios, it’s possible that the Examiner and the applicant are later at an impasse with regard to the other rejection (e.g., prior art rejection) and an appeal is needed in the future. The judge panel could have resolved it in the first place.

The second decision cites to the same above-two cases: Ex Parte DeYoung et al (PTAB Feb. 7, 2018) (not reaching written description 112 rejection because Section 101 was affirmed, citing In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009); Ex parte Gutta, 93 USPQ2d 1025, 1036 (BPAI 2009) (precedential)). Unlike decisions where the Board understandably could not reach other rejections because the claims were indefinite and the scope could not be understood, here the Board took the opportunity to avoid analyzing whether the claims found written description support in the specification. And it did so because Section 101 was affirmed.

The fact-specific grounds of rejection to be decided on appeal, which were omitted in the above two cases, do require time to analyze and write up. Especially in Ex parte Snow, it would have taken a lot of time for the panel to pore over multiple references in deciding obviousness. And in Ex parte DeYoung, it would have required careful consideration of the specification. But even though this requires a lot of time, it’s what PTAB judges do. That is, these decisions that do not decide all contested issues are extremely rare compared with the overwhelming majority of decisions that decide every issue that is argued.

If you have experience or opinions about this subject, we would love to hear from you. Please provide feedback in the comments section or by email at admin@anticipat.com whether the Board seems to be correctly relying on In re Comiskey and Ex parte Gutta for the proposition that it need not evaluate rejections after finding Section 101 is affirmed. Unsure opinions are great.