Understanding the Role of the Board of Patent Appeals: Ex Parte Rejection Rates on Appeal

Abstract

This study provides an issue-by-issue analysis of decisions by the Board of Patent Appeals and Interferences (BPAI) of the United States Patent and Trademark Office (USPTO). The study reports that most appeals from examiner rejections focus on two or more issues. Of those, the majority of rejections (61%) are affirmed and the remainder reversed. When more issues are presented, the case as a whole becomes more likely to be affirmed-in-part. In addition, I find that the likelihood that a case is affirmed has increased over time (Jan 2008 - May 2009).

By far, the most common issue on appeal is obviousness. I find that 87% - 90% of cases decide an issue of obviousness. Only 4% of appeals consider neither obviousness nor novelty. The major aberration of this trend is for cases involving biotechnology and organic chemistry (TC 1600). 18% of BPAI decisions involving those technologies focus on issues other than obviousness and novelty.

In comparing results by issue, I find that obviousness rejections are more likely to be affirmed than are other types of rejections. Cases that discuss neither obviousness nor novelty are reversed in 74% of cases.

The BPAI is becoming increasingly important. Over the past several years, the BPAI has seen a dramatic rise in the number of appeals being filed. In addition every recent patent reform legislative proposal has included an increasing role for the Board.

Keywords: BPAI, Patent, Appeal, USPTO, Patent Office, Selection Bias, Empirical, PTO, obviousness, nonobviousness