How often do the largest patent firms appeal?

We recently reported on eight reasons to consider filing an appeal during the course of patent prosecution. Based on the current relatively low number of appeals across all applications, we suggested that some law firms may be underutilizing the appeal procedure in their practices. Now, we report the differences among the three most active patent firms. Our methods are explained in more detail at the end.

The top firms are 1) Finnegan, Henderson, Farabow, Garrett & Dunner LLP ; 2) Fish & Richardson PC; and 3) Knobbe Martens, which came from a recently published blog post on PatentlyO on the biggest firms according to total registered patent attorneys/agents. The Patentlyo blog post put Finnegan in the lead, with Fish second, and Knobbe close behind. This doesn’t mean that these firms have the most amount of patent prosecution work, but it at least puts us in the ballpark. We report here that these three firms have far different numbers of ex parte PTAB appeals.  

From July 25, 2016 to February 22, 2018, Fish & Richardson had 143 appeals. Finnegan was second with 78 appeals. And Knobbe was third with 60 appeals. While Fish and Knobbe had roughly the same number of patent applications (60,916 and 58,170, respectively) across all customer numbers searched, Fish had more than double the appeals. Even Finnegan, which totaled a third fewer applications (41,194) than Knobbe, had more appeals than Knobbe. 

The disparate number of appeals across these firms stems from a confluence of factors. One factor relates to the law firm itself. That is, a law firm may over- or under-sell the benefits of an appeal. 

Some practitioners get comfortable at preparing Amendment office action responses because it is the most common. Knowingly or not, psychological biases could influence the response strategy that a practitioner chooses or recommends to pursue. A practitioner whose recent sucessful strategy in one case might let this success influence strategy in an unrelated case simply because the strategy is more recent. Plus, projects that have fixed or capped fees favor efficiency and practitioners may opt for work that they are efficient at doing. These biases can be reinforced by billable hour incentives because prosecution can always be continued with an RCE.

Finally, to law firms’ defense, before now there hasn’t been a way to quantify the chances of succeeding on the merits of an appeal. A wealth of experience can put someone in the general vicinity, but even then is incomplete. 

So part of the reason why firm appeal rates differ is law firm-specific.

Another factor for law firms pursuing appeals at much different levels relates to the client. Some clients simply care less about the quality of patents. To them, numbers are more important. So despite the appeal procedure having several advantages for getting a good patent, it may not be necessary for some clients’ goals. An allowed application, even with narrow unusable claims, may be good enough.  

That clients drive appeals is perhaps best shown in the unequal distribution of appeals across customer numbers within a given firm. Pockets of appeals may show up disproportionately high for one customer number and low for others, suggesting that the decision to file an appeal largely depends on the client. Some clients may not like the concept of appealing. And as every lawyer knows, even excellent advice can only go so far, after which the client makes the call. 

Further still, different firms have different clientele, and some clients have more patentable subject matter than others. Often times, appeals are pursued only after options with examiners have been exhausted. So if firms operate under this paradigm (which is not being suggested that these three firms do), the clients with the less patentable subject matter might appeal more. But part of advocating includes not only accepting the client’s money, but providing realistic feedback on patentability. 

Another reason a client may shy away from an appeal may stem from a lack of trust with the practitioner. The upfront cost of appealing is not small change. And the client may interpret a strategy suggestion to appeal as a way to extract more money from the client, even with the best of intentions. Up until now, there has not been a good way to objectively convey the chances of succeeding on appeal and advancing prosection. 

But now, with Anticipat Practitioner Analytics, you can print out an unlimited number of professional reports that show how often the board overturns specific grounds of rejection relevant to a specific examiner. These include the specific points, called tags, and the legal authority, that the Board relied on in overturning similar rejections. 

For example, take a Section 101 rejection asserting abstract idea. You believe the examiner is wrong on step 1. By looking at Anticipat, you can see where the Board has overturned abstract idea rejections based on step 1 for this examiner, art unit, or tech center. With this knowledge, you can feel more confident in advising appeal. So a data driven approach can greatly improve the advice and build trust on the strategy. 

Give Anticipat a try for a 14 day free trial. Our team is happy to provide a demo. 

Methods

We looked up customer numbers for the three firms using a publicly available dataset. We then analyzed customer numbers associated with the three firms, of which there were a lot. Finnegan has at least 55 customer numbers totaling 41,194 applications. Fish has at least over 100, totaling 60,916 applications. And Knobbe has at least 50 customer numbers, totaling 58,170. We then plugged in the customer numbers into Anticipat’s Research page and tallied up the total for the relevant window of time.

Anticipat’s Mission: Help Patent Practitioners Succeed with the Best Data

We at Anticipat have a passion for improving patent prosecution by harnessing better data. We want our users to succeed in their own practices with the help of this data.

Better data includes aggregate ex parte appeals data that is relevant to grounds of rejection practitioners face. That is, an Office Action with a particular ground of rejection with specific reasoning has very likely been overturned on appeal in another application. We connect these dots for you. 

Better data also includes more general metrics, such as the reversal rates for specific grounds of rejection for a given Examiner, art unit, tech center. It also includes having the arguments and legal authority that the Board has used in overturning specific Examiner rejections.
While much of Anticipat’s initial focus and expertise are on Board data, it is only a piece of the puzzle. Our holistic approach requires data of all facets of patent prosecution, as well as a deep understanding of the context of patent prosecution procedures. We strive to further understand the incentives and behavioral decision-making patterns of all parties involved in the patent system so that proper context of USPTO statistics is understood and applied.

Only by having the best data can you optimally guide your prosecution strategy. With this arsenal of data, you can anticipate expected outcomes and put yourself in the best position for success. We hope you’ll join us on the journey. Click here to get started.

Recent Rehearing Decision Reverses Panel’s Previous Affirmance on Section 101

Losing a Section 101 appeal at the PTAB can sting. In many cases, continued examination is off the table as further amendments may not help the cause. And appealing up to the courts involves spending a lot of time and money. But there is another option: filing a request for rehearing. A recent decision shows that this procedure is not fruitless for Section 101 rejections, even if it may seem like it is. 

Recently decided Ex parte MacKay, Appeal No. 2015-008232 (September 20, 2017) reversed a Section 101 rejection that it had previously affirmed in its initial decision. In the rehearing decision, the panel was less than wordy when it acknowledged that it realized that the relied-upon identification of an abstract idea (i.e., “rules for playing a game”) may not be affiliated with the limitations recited in the claims on appeal. Instead, the claim recites the creation of a game board surface image. The panel concluded that the record failed to adequately establish that the claims at issue are directed to an abstract idea, and the rejection under 35 U.S.C. § 101 was not sustained. 

On the face, intuition might suggest that requests for rehearing are a futile endeavor. And perhaps the numbers reflect this futility. The percentage of applications that get appealed to the PTAB is quite low, 1-2%. But the percentage of appeals where the applicant files a request for rehearing is that much lower, about 1-2% of the appealed decisions. On the surface it makes sense why this procedure is rarely used. But it should not be taken out of consideration for the following two reasons. 

First, appellants may present a new argument based on a recent relevant decision of either the Board or the Federal Circuit. But unless a case comes out that supports the appellant’s position and is directly on point, the rehearing panel can easily distinguish. Plus, with such a short window between the appeal decision and the rehearing decision, unless the Board failed to consider a key case in its original decision, it would seem less likely that an appellant’s new argument saves the day.
The second reason an appellant should consider rehearing is to show that the Board misapprehended or overlooked points. See 37 C.F.R. § 41.52(a)(1). Because the same panel of judges that rendered the initial decision rules in the request for rehearing, it might seem less likely that the panel admits that it misapprehended points in their earlier decision. But it turns out that it does work, as shown in the above case.

In conclusion, if you’re feeling out of options after an unsuccessful appeal to the PTAB, consider filing a request for rehearing. It’s fast (only a few extra months of wait time for a decision) and as shown above, there’s a chance that it helps reverse the rejection. Plus the cost is miniscule compared to appealing to the Federal Circuit or Eastern District of Virginia (the other options for seeking redress of the unfavorable PTAB decision). 

When a Final Office Action comes in, consider using Anticipat. Here’s why

A first Office Action can involve a lot of guesswork. What does the Examiner mean with a particular rejection analysis? Is the Examiner serious with a particular rejection or just bluffing? Can the Examiner really get away with a particular rejection? To understand the issues and hopefully resolve them, an interview and a response with clarifying amendments and strong arguments can be critical to getting the application allowed.

But when a Final Office Action comes in, at least two pieces of the guesswork are gone: the Examiner still does not believe your application is patentable and you are likely facing an RCE. You have a lot of options: you can appease the Examiner with further claim amendments, narrowing the claims with no guarantee of an allowance. You can appeal the case to independent panels (including judges at the PTAB or Board) to evaluate the propriety of the rejections. Or you can use Anticipat.com and learn from others’ appeal information about this Examiner or art unit to learn from outcomes in similarly fought battles. This latter option can be used to guide your specific prosecution strategy, putting you on top for your client.

An important point about Examiners is that they all examine applications quite differently. For one, they have different personalities and understandings, resulting in a varied interpretation of the patent laws and rules. And these kind of personality differences tend to repeat from application to application. For example, an Examiner who is pre-occupied with unreasonably broad interpretations for one application will be preoccupied with them for another application.

Another difference in examination lies in examiners’ specific training and work group guidance, much of which stems from specific technology nuances. For every formal Guideline published by the USPTO, many other internal guidances get circulated to tech centers and art units that admonish examiners within these smaller groups how they should examine applications.

But not all of these personality quirks or internal memos comport with the patent laws or patent rules, which is where the Board comes in. The Board is the first line of defense in holding Examiners and even their SPEs accountable for the rejections they issue. When an applicant appeals a case, the Board is the first to overturn the Examiner or supervisor.  Either way, having objective evidence of this track record and lessons from these prior decisions can inform or validate a particular strategy. Even if a practitioner already knows about a particular examiner’s or art unit’s quirks, such Board data for this examiner/art unit can be used to see others’ successes in dealing with issues.

With Anticipat Research, you can quickly look up all decisions that were decided with a particular Examiner, her art unit, or tech center on any ground of rejection. So the savvy practitioner will likely want to see the decisions that were overturned on an issue this practitioner is dealing with. This research tool cuts down the time compared to public ways of finding out this information. See https://e-foia.uspto.gov/Foia/PTABReadingRoom.jsp. It also makes the searching an overall better experience. This tool pays for itself within minutes of use each month.

gilkeyresearch

Anticipat Practitioner Analytics goes a step further in making Board information actionable in one’s own prosecution practice. Simply input an application number (or Examiner name or art unit) and you can see what the Examiner’s reversal rate for a particular ground of rejection is. You can also see the exact numbers of decisions reversed and click on the specific decisions to see if the issues are as similar as they say they are.

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Anticipat Analytics also breaks down the most persuasive arguments that the Board relied on in reversing this particular ground of rejection of interest. If appropriate, you can click on a legal authority icon that provides you with the legal authority that the Board relied on for this particular argument. What these provide for a practitioner is an outline straight from the Board of successful ways to overcome various grounds of rejection. The efficiencies and knowledge gained pay for themselves within minutes of use. To see more, watch this YouTube video.

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Give Anticipat a try right now for a free trial.

Anticipat’s focus is simple: complete and accurate annotation of PTAB ex parte appeals decisions

Despite recent strides, the USPTO does not make it easy to extract all its data. This is especially true for ex parte appeals decisions from the Patent Trial and Appeal Board (PTAB)–even though these appeals decisions establish key data points about general patent prosecution. We discuss seven shortcomings of the PTO websites as well as Anticipat’s solution to each of these shortcomings.

1) No centralized repository – If you are looking for a decision without knowing the authority (i.e., precedential, informative, or final), you will likely have to search through three different databases on different web pages. This is because the different types of PTAB decisions are scattered across different web pages depending on the authority of the decision.

Anticipat houses all decisions in a single repository and it labels each decision with the respective authority. To date, Anticipat has all publicly available PTAB appeals decisions in its database.

2) Non-uniform and sporadic decision postings – The USPTO does not post every decision to the Final Decisions FOIA Reading Room webpage on its issued date. For example, if there are 100 decisions dated July 29, five may show up the day of July 29. Fifteen may show up on July 30 even though they are still dated and show up on the database as dated July 29. Twenty may show up on July 31. Fifty may show up August 1. Five may show up August 4. Three may show up August 5. Another one may show up August 6. And another may show up August 7. To monitor recent decisions, it can take time to keep track of which decisions have been looked at.

To fix this, Anticipat has multiple redundant scrapers to check for any backfilled decisions, making sure that every decision posted to the e-foia webpage is picked up. And it emails a recap of these annotated decisions on the 10th day to make sure that the complete set has been included.

3) Unreliable connection – Whether you’re just trying to load the main USPTO page or whether you’re searching for a particular decision, the PTO site (especially the FOIA Reading Room) can be slow or even unresponsive in letting you access data.

Anticipat solves this problem by being hosted on a scalable cloud server. The site should never be down, even during peak traffic.

4) Search functionality limited – The Final Decisions page allows limited search (e.g., date range, Appeal No., Application No., text search, etc.). But none of these searching capabilities are actually available for the 21 precedential and 180 informative decisions.

Even though the Final Decisions page allows for some search functionality, the type of searchable data underwhelms.  First, the input fields can be extremely picky.  For example, if you input an Application No. with a slash (“/”) or a comma (“,”), you get a “no results found” message. But for this particular input, the real problem is not that there are no results for the value input. Rather, it is that that you included a character not recognized by their program. This misleading message does not distinguish whether input values exist or whether the format of the query you entered simply is not consistent with the website’s expectations.  Further, there is no search capability for some of the most useful types of data: art unit, examiner, judge, type of rejection, outcome of the decision, the class, etc.

To overcome this, Anticipat permits loose input so that you unambiguously get the results you need without having to prophetically predict the required format. And it does this for decisions for each type of authority. Anticipat has also taken the time to supplement decisions with their respective application information, such as art unit, examiner, judges, grounds of rejection, outcomes, etc.  Only Anticipat’s database allows you to find all those cases using the most useful data for your analysis.

5) Unorganized data display – In addition to not being able to organize the data into one repository, as discussed in 3), the organization within the Final Decisions page is lacking. To its defense, the PTO does provide some organization to the various decisions. It organizes Final Decisions by (D) – Decision, (J) – Judgment, (M) – Decision on Motion, (O) – Order, (R) – Rehearing, and (S) – Subsequent Decision. However, the page does not allow you to display decisions by each type. Indeed, this organization of the types of decisions feels like more of an afterthought than as a way for users to effectively organize the data. Further, the organization does not go far enough. For example, within (D) – Decision are reexaminations, reissues, inter partes review, covered business methods, decisions on remand from the Federal Circuit, and regular appealed decisions.  There is no way to filter these different types of decisions from each other without manually screening all the decisions in the results list.

To fix this, Anticipat database tracks the various different types of decisions so that one can easily filter by certain subsets of decisions or search within specified subsets. Each sortable column can be sorted in ascending or descending order. Other columns of different information can be added by selecting the checkboxed fields.

6) Downtime from 1:00AM – 5:00AM EST – Every morning, the PTO takes the FOIA Reading Room website offline and performs maintenance on the website. This may not be a big deal to some people, but for someone in another time zone or just in night owl mode, this four hour wait time can cost you a lot of time in accessing your desired decision or data.

Being hosted on a cloud server, Anticipat has now regularly interrupted maintenance time. You are free to use at all hours of the day.

7) Errors – Coming from a federal government website, it’s understandable that some of the decisions data contain errors. Some errors are minor such as the name of the decision being cut off because it includes an apostrophe. Others are more consequential like mismatching a decision with another application number or combining one decision with two decisions.  Because every decision in the Anticipat database is verified using our proprietary systems, we work hard to catch and resolve the errors in the source data of every decision.

 

In conclusion, because of the above discussed deficiencies, ex parte PTAB data have been consistently overlooked because it simply cannot be effectively retrieved and analyzed by practitioners.  While you may not realize it yet, this may be costing you your time and your money. However, Anticipat.com alleviates these deficiencies. Access the Research Database here.

 

Looking at Abstract Idea Appeals by Tech Center

Anticipat Beta Research Database recently released the tech center search filter and the tech center column in the table display. Appeals data can now be examined for trends using tech center groupings. In this post, we will showcase one example of how this might be useful using the “abstract idea” ground of rejection.

In the past 7 months, 123 decisions have been decided on the “abstract idea” ground of rejection. Here is the breakdown for the “abstract idea” statutory subject matter rejection across all tech centers.

abstractidea

1600 1700 2100 2400 2600 2800 3600 3700 3900
6 1 7 9 7 2 75 13 1

Tech center 3600 is software and business method-heavy. In the immediate aftermath of the Supreme Court deciding Alice, many suspected that these types of patents/patent applications would be on the chopping block. And many examiners have sought to enforce such an approach. Small wonder, then, that this tech center leads in abstract idea appeals.

To put context to these numbers, we looked at the intake number of appeals per tech center. This intake of FY17 is only a rough comparison of the decided appeals in FY17 since it takes many months for an appeal taken in to be decided.

intake

Comparing intake of appeals and abstract idea decisions, appeals of tech center 3600 are very much overrepresented compared to the decided abstract idea appeals. With the exception of the two lowest tech centers, the appeal intake of tech center 3600 is anywhere from 2-4 times the intake of other tech centers. But tech center 3600 decided appeals are a much different story–anywhere from 5-36 times the decided appeals.

An obvious reason for this overrepresentation is that the abstract idea doctrine does not affect all tech centers equally. Tech centers 1600 and 1700, for example, are focused primarily in the biotech and chemical arts, and other judicial exceptions to statutory subject matter are more applicable (e.g., law of nature, naturally-occurring phenomenon). Other tech centers are focused on physical inventions where the abstract idea ground of rejection is theoretically less applicable. For example, tech center 2800 includes inventions in semiconductors, memory, circuits, optics and printing. And as can be seen, the ratio of abstract idea appeals in tech center 3600 to tech center 2800 is far greater than the ratio of the corresponding intake.

Another reason for the overrepresentation stems from the large number of abstract idea rejections introduced as “new.” For the relevant time period, there were 16 new rejections in this tech center alone. This number is more than any of the other tech centers’ total number of abstract idea decisions of any disposition. This shows that the abstract idea doctrine is top of mind for judges deciding these types of cases, even if the Examiner did not apply an abstract idea rejection for the appeal.

A final reason for the overrepresentation may stem from the high volatility of the abstract idea doctrine. We generally assume based on anecdotal evidence that filing for an appeal is a (comparatively) arduous alternative to working with the Examiner through argument, interviews, and making amendments to overcome rejections. Thus, appealing a case requires a level of dedication that is born of coming to an impasse with the Examiner. Often times such an impasse can take place when the law is in flux—the Examiner can hold to one position and the applicant can hold to a contrasting position. And with software-focused inventions, such as those in tech center 3600, often times the impasse is the Examiner asserting that there is nothing patent-eligible in the application. Such a position leaves little room for any other procedure but appeal.

It would be discouraging if the judges in tech center 3600 supported this abstract idea chopping block attitude reflected by some. But the outcomes data show that they do not. We previously reported that the rate that abstract idea rejections are reversed are in line with other Section 101 nonstatutory rejections: 25% wholly reversed and 27% partially reversed. As we drilled into the abstract idea rates on a tech center level, we found that the same reverse rates hold true for tech center 3600. That is, 19/75 decisions (25%) in tech center 3600 were wholly reversed and 20/75 decisions (27%) were at least partially reversed. This shows that in the face of significant abstract idea rejections in tech center 3600, judges reverse at the same rate as other tech centers.

The above discussion shows that, by using tech center-focused appeals data, a quantitative assessment of how strong an Examiner’s position for a particular ground of rejection can be deduced by comparing that ground of rejection by technology center.  While we have done this for “abstract idea” grounds in this post, this same analysis can be done for the other grounds of rejection reviewed by the PTAB.  With this information, the odds of success on appeal can be better calculated based on which technology center is examining a particular case.

 

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:

graph

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.