In Technology Center 3600 there seems to be a disturbing trend where the Board reverses patent examiners on every issue and yet no patent is issued. Instead, the Technology Center Director for 3600 authorizes the reopening of prosecution and Alice rejections are given instead of a Notice of Allowance. See The Impotence of the Patent Trial and Appeal Board.
In the cases where prosecution has been reopened after a complete reversal by the Board the appeals briefs were filed prior to the Supreme Court issuing its decision in Alice v. CLS Bank. This has lead some to argue, rather mistakenly, that it is reasonable for the Patent Office to reopen prosecution in these cases to prevent claims that do not deserve to be patented to issue. This thinking is wrong for three reasons. First, the Board has the authority to issue a new ground of rejection (which they are known to do) and they did not in any of these cases, so they did not see any Alice issues. See 37 CFR 41.50(b). Second, the Board has the authority to remand a case to the patent examiner for further consideration, which again did not happen in any of these cases. See 37 CFR 41.50(a)(1). Finally, it is immoral to leave an applicant to rot waiting for an appeal for 3 to 4 years only to reopen prosecution once victory is achieved.
The last point is perhaps the hardest to dismiss because the Patent Office is supposed to treat everyone in a procedurally equal and fair way, which clearly and undeniably is not happening.
It is unconscionable that applicants were left to wait for an appeal decision for over 3 years where there was absolutely no intention of issuing the patent even if there was a complete reversal. These types of delay tactics represent a war of attrition against applicants that is being waged by certain patent examiners and Group Directors, which is obviously being tolerated by Patent Office officials. What is remarkably sad, and downright unfair, is that these delay and deny at all cost tactics normally work, with applicants generally giving up and abandoning cases because it is clear that whatever they do, no matter whether they prevail, regardless of the frivolous nature of the rejections, the examiner will simply reopen prosecution.
This unseemly chapter in the relationship between the Patent Office and patent applicants was the subject of a brief conversation that took place on the record at the last Patent Public Advisory Committee (PPAC) meeting held at the Patent Office.
Esther Kepplinger, who is the chief patent counselor at Wilson, Sonsini, Goodrich & Rosati, as well as the Chair of PPAC, brought up the problem many applicants are facing in Technology Center 3600. Kepplinger, who herself was a former USPTO senior official, said:
I know in the past the patent office when there was a law changed the Patent Office sent people to the Board of Appeals to identify cases that might have potential rejections. And the recent criticism about cases in the business method area that, you know, were affirmed at — or were reversed at the board but then come back to the TC only to receive a new rejection that might be something you might want to look at to go and see whether there are cases so that the applicant doesn’t wait the whole long time to get a decision and then only to face a new rejection back in the TC. Just, you know, I don’t know if you’ve done that or whether you could do it but it’s something to consider.
Robert Bahr, the Deputy Commissioner for Patent Examination Policy, responded that “hindsight is great,” and went on to explain that they thought that the rejections that were being appealed to the Board would stand and there would not be a need to bring the cases back and issue Alice rejections. “These are sort of judgments calls you have to make,” Bahr explained. “Sometimes it works out for you and sometimes it doesn’t.”
The decision to allow cases to sit there for years without having anyone apply Alice only to have them pulled back into prosecution is more than a mistake in hindsight; it was a mistake period! Those cases sat there for years without any hope that they would ever reach a final resolution favorable to the applicant on the next consideration.
One of the most frustrating things I encounter when talking with certain patent examiners, and some USPTO officials too, is they simply do not understand the appeals process from the applicants perspective. Patent examiners will tell patent practitioners all the time that if you disagree with me just appeal. Just appeal!?!?! Do you have any idea what that means? It means at least several thousands of dollars of additional expense (probably more) and a minimum of three additional years pending at the Patent Office, and that is just while you wait for a decision from the Board. For many companies the thought of appealing, both in terms of hard costs and opportunities costs and time value of money are simply unacceptable. When a patent examiner or Patent Office official says “just appeal” you might as well just stick out your middle finger, because that is how it is received both in spirit and in fact.
It is bad enough when an applicant has to wait on appeal for more than three years to rectify clearly bogus rejections, but if telling the applicant to “just appeal” is the equivalent of the middle finger (which I assure you it is) then what do you suppose it feels like when you’ve prevailed after being given the middle finger and the Office still reopens prosecution anyway?
Simply put, the damage that is being done to the Office and to the longer term relationship between examiners and applicants is impossible to put into words. Senior management is well aware of what is going on and they seem to view the problem as being akin to Monday morning Quarterbacking — in hindsight maybe we should have done things differently. No maybe about it, and if things don’t change soon the amount of effort that will be required to overcome the damage will be monumental.
Patent examiners in TC 3600 are being completely overruled by the Board in an alarming number of cases. It is well known both inside and outside the agency that certain Art Units in TC 3600 give bogus rejections. It is well known both inside and outside the agency that Supervisory Patent Examiners (SPEs) and Quality Assurance Supervisors (QAS) do not think business methods and software should be patentable and, therefore, they force examiners who report to them to reject applications even with the examiner assigned to the case can come up with no legitimate reason to reject. It is also well known both inside and outside the agency that the number of times examiners in TC 3600 are completely reversed by the Board is much greater than in other areas of the Office. This all being true, it is simply not credible to say that the Office thought those rejections would be sustained.
I get that the Office may feel they need to circle the wagons, but that is the wrong response. The proper response would be to weed out those in TC 3600 who have not issued patents for years and reassign them to places within the Office where they can’t do any damage to applicants. If even that common sense step isn’t taken all the criticism of the Office will be heartily justified.