Comments on: US Patent Office Seeks to Modify Appeals Rules… Again http://www.ipwatchdog.com/2009/12/22/us-patent-office-seeks-to-modify-appeals-rules-again/id=7989/ Patents, Software Patents, Patent Applications & Patent Law Thu, 09 Feb 2012 07:58:49 +0000 hourly 1 By: Abbott Labs Ordered to Pay $175 Million Pre-judgment Interest | IPWatchdog.com | Patents & Patent Law http://www.ipwatchdog.com/2009/12/22/us-patent-office-seeks-to-modify-appeals-rules-again/id=7989/#comment-11450 Abbott Labs Ordered to Pay $175 Million Pre-judgment Interest | IPWatchdog.com | Patents & Patent Law Sat, 20 Feb 2010 23:30:40 +0000 http://www.ipwatchdog.com/?p=7989#comment-11450 [...] was trying to write about this all day yesterday, but with news of the USPTO announcing they would consider the Appeals Rules anew, and Microsoft getting re-slapped with a Word permanent injunction, I didn’t get around to [...] [...] was trying to write about this all day yesterday, but with news of the USPTO announcing they would consider the Appeals Rules anew, and Microsoft getting re-slapped with a Word permanent injunction, I didn’t get around to [...]

]]> By: Just visiting http://www.ipwatchdog.com/2009/12/22/us-patent-office-seeks-to-modify-appeals-rules-again/id=7989/#comment-10040 Just visiting Wed, 23 Dec 2009 20:25:49 +0000 http://www.ipwatchdog.com/?p=7989#comment-10040 If the BPAI wants to cut pendency, then there are some things they can do. Stop re-examining the application!!! The BPAI is supposed to decide whether applicants established that the Examiner has committed reversible error -- not whether the APJ can come up with a better rejection based upon the APJ's factual findings, own claim constructions, and own legal analysis (which almost always is an obviousness analysis). Too many decisions by the BPAI are less "Decision" and more third (or fourth or fifth) Office Action. This is what happens when the BPAI is most made up of former examiners -- you get people thinking they can do better. As such, instead of focusing on the issues presented, they waste time by re-examining the application. Also, by giving examiners a crutch to lean on (i.e., by giving a free pass to bad examination) they just reinforce that bad analysis and incomplete findings of fact will be upheld by the BPAI. There are a couple different types of cases you can take to the BPAI. In my experience, the most common case to take to the BPAI is those in which the Examiner has royally scrwed the pooch. Anybody practicing the last decade has noticed that the quality of rejections is awful. As a result, the number of Appeals has skyrocketed. Also, commit the USPTO to stop f'ing with the continuation/RCE rules. The number of Appeals being filed jumped when the rule packages that restricted continuations/RCE was about to be passed. When you are only given a single bite at the RCE apple, people started realizing that Appealing bad final rejection was better than filing an RCE. Regardless of what changes, the fact of the matter is that if you were to file a Notice of Appeal on January 1, 2010, odds are that you'll get a decision sometime late 2012 (perhaps even into 2013). Of that delay, Applicants will have contributed 4 months worth (2 months after filing the Notice of Appeal and 2 months after the Examiner's Answer to file the Reply Brief). Counter-intuitive to what it may seem, the cure for the BPAI's backlog doesn't rest with the BPAI. Instead, it rests with the Examining Corp providing better examination. A bad rejection is far, far more likely to be appealed than a good rejection. If the BPAI wants to cut pendency, then there are some things they can do.

Stop re-examining the application!!! The BPAI is supposed to decide whether applicants established that the Examiner has committed reversible error — not whether the APJ can come up with a better rejection based upon the APJ’s factual findings, own claim constructions, and own legal analysis (which almost always is an obviousness analysis). Too many decisions by the BPAI are less “Decision” and more third (or fourth or fifth) Office Action.

This is what happens when the BPAI is most made up of former examiners — you get people thinking they can do better. As such, instead of focusing on the issues presented, they waste time by re-examining the application. Also, by giving examiners a crutch to lean on (i.e., by giving a free pass to bad examination) they just reinforce that bad analysis and incomplete findings of fact will be upheld by the BPAI.

There are a couple different types of cases you can take to the BPAI. In my experience, the most common case to take to the BPAI is those in which the Examiner has royally scrwed the pooch. Anybody practicing the last decade has noticed that the quality of rejections is awful. As a result, the number of Appeals has skyrocketed.

Also, commit the USPTO to stop f’ing with the continuation/RCE rules. The number of Appeals being filed jumped when the rule packages that restricted continuations/RCE was about to be passed. When you are only given a single bite at the RCE apple, people started realizing that Appealing bad final rejection was better than filing an RCE.

Regardless of what changes, the fact of the matter is that if you were to file a Notice of Appeal on January 1, 2010, odds are that you’ll get a decision sometime late 2012 (perhaps even into 2013). Of that delay, Applicants will have contributed 4 months worth (2 months after filing the Notice of Appeal and 2 months after the Examiner’s Answer to file the Reply Brief).

Counter-intuitive to what it may seem, the cure for the BPAI’s backlog doesn’t rest with the BPAI. Instead, it rests with the Examining Corp providing better examination. A bad rejection is far, far more likely to be appealed than a good rejection.

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