IP in Depth: Expedited Patent Appeals
On average, there is a 3.3-year time period between the beginning of a patent examination until an appeal is filed. What happens during that time?
Almost 11,000 appeal decisions were made by the U.S. Patent and Trademark Office (USPTO) during 2015, with an average of nearly 30 months for an appeal decision to be made. The average pendency from filing date to an appeal decision is 86.9 months, leaving a pendency from filing date to filing an appeal of 56.9 months.1 The current average pendency before examination begins is 17.5 months.
From this information, we can calculate that, on average, there is a 3.3-year time period between the beginning of examination until an appeal is filed. What happens over those 3.3 years?
Examination begins with the USPTO issuing an Office Action. Patent applicants are given three months to respond to Office Actions; this response period can be extended for up to three additional months. In 2010, Dennis Crotch reported that about 66% of applicants respond to Office Actions within the original three-month period.2 The USPTO currently reports that the average turnaround time from receiving and acting on an applicants’ response to an Office Action is two months, at which time a Final Office Action is often issued.
Reaching this point has only taken five months for those applicants that respond by the three-month response date, leaving 34.4 more months outstanding for those applications that eventually go to appeal. In response to a Final Office Action, applicants have another three months to file a response or a Request for Continued Examination (RCE). The USPTO reports that, on average, it takes 3.1 months for examination of an RCE to continue (i.e., for a new Office Action to be mailed out). If an applicant files an RCE at the three-month response date of the Final Office Action, we can reduce the remaining months we have to account for to 28.3 months for those applications that go to appeal.
If the applicant files an unsuccessful response to a Final Office Action, the USPTO will issue an Advisory Action; at that point, an applicant will have to file an RCE to keep the application moving along. Currently, Advisory Actions are issued by the USPTO within about 20 days of After Final responses, so the applicant likely will need a one-month extension of time (from the mailing date of the Final Office Action) to file an RCE. Proceeding along this route leaves 27.3 more months of pendency before appeal that we have to account for.
The timespan from the very First Office Action until the Office Action is issued subsequent to filing an RCE is about 11-12 months. With 39.4 months to account for from the beginning of examination until an appeal is filed, it seems that this 11-12 month cycle can easily be repeated three times and include three to six Office Action responses and three RCEs. In the USPTO Performance and Accountability Reports for fiscal years 2012 and 2013, it is reported that rate of RCEs is 29.6%, which indicates that RCEs are indeed filed quite frequently.
The cost of responding to an “uncomplicated” Office Action is estimated to be in the $1,200-3,500 range. An RCE can incur comparable costs. Significant costs can thus accumulate over the 3.3 years of pendency between the start of examination until appeal.
On June 19, in an effort to reduce the growing backlog of applications on appeal, the USPTO initiated the Expedited Patent Appeal Pilot program. Under this program, applicants having two or more applications under appeal can have one of their applications expedited through the appeal process in exchange for abandoning another application under appeal. Abandoning an application on appeal after the application has pended nearly five years and expensively prosecuted over three years seems counterintuitive, especially if the motivation over time has been that the examiner’s rejection is wrong and/or that the invention is important. Once an application is abandoned, the inventive subject matter may no longer be protected and could fall into the public domain for anyone to use and exploit.
It would seem that after getting to the appeals stage after 60 months, and waiting 30 more months for the Patent Trial and Appeal Board to get through the backlog to decide on the appeal, it might be worth the wait. It would be haunting to lose the appeal on an expedited application and thus miss out on two applications, wondering if the appeal on the abandoned application might have been successful.
2. Patently O, www.patentlyo.com
Any views or opinions expressed in this column are those of the author and do not represent those of Ceramic Industry, its staff, Editorial Advisory Board or BNP Media.
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