IP Law Bulletin

The United States Patent and Trademark Office (USPTO) recently released the statistics of the Board of Patent Appeals and Interferences (BPAI) for the fiscal year ending September 30, 2009. Of the 6,800 appeals disposed of in FY2009, the examiner’s rejection was wholly affirmed in slightly more than 50% of cases, affirmed-in-part in 14% of cases, and wholly reversed in 25% of cases. Additionally, more than 15,300 appeals were filed during FY2009, representing an increase of more than 140% over those filed in FY2008. Although the BPAI disposed of almost 40% more cases than in FY2008, the astonishing increase in appeals filed in FY2009 bloated the backlog of cases pending before the BPAI to almost 12,500, with an average pendency of 8 months. The BPAI’s Chief Administrative Patent Judge recently warned that, despite the additional 35 judges hired since 2007, the BPAI is ill-equipped to deal with the growing number of appeals. Without additional personnel and resources, the BPAI projects that the backlog of pending appeals could approach more than 21,500 cases, with an average pendency of 14 months, by the end of FY2010. Given that applicants and examiners typically spend about 11 months filing appeal briefs and replies before the case is even forwarded to the BPAI, applicants could soon be waiting on average more than two years after filing a notice of appeal to have their appeal resolved.

Many factors obviously must be considered before deciding to appeal a rejection. These include the strength of the applicant’s case and the extent of prosecution conducted thus far. Keeping in mind that examiners sometimes thwart the appeal process and simply reopen prosecution rather than file an examiner’s answer, other tactics must be considered as well. For example, new arguments and/or amendments may be able to resolve prosecution in a timely and satisfactory manner without an appeal. In some cases, the pre-appeal brief conference program, which offers the potential for an expedited review of the issues and a decision within 45 days of an applicant’s request, can prove to be a useful tool. It is estimated that about one-third of the cases in which the applicant has requested a pre-appeal brief conference result in an allowance or the reopening of prosecution without the applicant having to file an appeal brief. 

In cases where an appeal must be pursued, it is helpful that an applicant is entitled to a patent term adjustment equal to the number of days from the filing of the notice of appeal to a final decision by the BPAI in favor of the applicant. Similarly, a remand by the BPAI entitles the applicant to a patent term adjustment, so long as a request for continued examination (RCE) is not filed prior to the examiner’s issuance of a subsequent office action or a notice of allowance. While patent term adjustments mitigate some of the risk associated with filing an appeal, the current backlog of appeals in the BPAI and the resultant delays should incentivize applicants to carefully consider their options before moving forward with an appeal.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.