Monday, May 14, 2012

Board of Patent Appeals Backlog Enormous and Growing

On May 3, 2012, Director Kappos noted that the Board of Patent Appeals and Interferences (BPAI) has a large backlog of ex parte appeals. How large? In April 2012, Chief Administrative Judge Smith gave a presentation with slides at the AIPLA Spring Conference that indicates the growing backlog is over 30,000 cases.

The USPTO has made various attempts to attack the enormous backlog. In December 2011, Chief Judge Smith proposed various ways to streamline the appeals process in a blog post here but the backlog continues to grow. In the AIPLA presentation in April 2012, Chief Administrative Judge Smith suggests per curiam decisions and hiring more administrative judges would help.

Hiring more administrative judges, streamlining the appeal process, and per curiam decisions will help, but to really reduce the backlog the USPTO must increase the quality of initial examination. One way to increase quality is to liberally encourage PTO interviews. Interviews to discuss concrete detailed proposed amendments and replies are the best way to identify issues, reach a mutual understanding, and proceed on how to claim an  invention with respect to the prior art. Examiners should initiate interviews and never refuse a request for an interview even after a final Office action. One reason applicants appeal is they have grown frustrated with a revolving door of prior art rejections, i.e., a paper exchange that goes round and round and is even at times sustained by some examiner's desires to get another RCE on their docket. Until we address this type of  problem in examination, the appeal backlog is not going away.

This is not to suggest every application interviewed contains patentable subject matter and should result in a patent. Instead, the result should be that applicants and examiner understand what claims, if any, are patentable. And examination should end with a mutual understanding that nothing further would be gained by an appeal to the Board. Reaching a mutual understanding requires listening to someone with contrary views. It is difficult work, but I don't see how to avoid it. We don't need to hire more administrative judges or examiners, but retain and hire better examiners and administrative judges, who can rapidly assimilate the technology, the legal arguments and are paid sufficiently that they can make a career at the PTO. If we retain the best examiners, we will see the backlog reduced. And everyone should benefit from their experience. Otherwise, we accept that some of the best examiners opt to leave for law firms after working a few years at the PTO, that we have large backlog at the examination which includes 42% RCEs, and that we have an appeal backlog of about 30,000 cases.

On September 16, 2012, the America Invents Act (AIA) will add new post-grant procedures to the ex parte appeal workload being handled by the BPAI (later the Patent Trial and Appeal Board (PTAB)). Thus, the PTO needs to turn this around in the next six months to avoid further growth of the appeal backlog.

Copyright © 2012 Robert Moll. All rights reserved.