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Of Patent Appeals and Roshambo


For those of appealing the rejection of your patent application the following joke might hit a little too close to home:

Farmer Joe and Farmer Bob were at constant odds with one another over Farmer Bob’s roving livestock. One day, fed up with a chicken of Farmer Bob’s that had wandered onto Farmer Joe’s farm, Farmer Joe picked up the chicken and threw it into his own, well-fenced, chicken coop. Before long Farmer Bob shows up, sees his chicken in Farmer Joe’s coop and angrily demands its return. Farmer Joe refuses. The exchange becomes increasingly heated until Farmer Joe makes a proposal. I’ll Roshambo ya for it! He explains to Farmer Bob that Roshambo involves taking turns soundly kicking one another in the groin, the first one to give up loses. Both men agree. Farmer Joe goes first, and with a steel toed shoe kicks Farmer Bob so hard that he drops to the ground writhing in pain. After a half hour of groaning and vomiting blood, Farmer Bob finally drags himself upright. Farmer Bob looks Farmer Joe squarely in the eye, and through his blood spittled lips hisses “My turn.” Farmer Joe nonchalantly turns and walks away. As he leaves, he shouts over his shoulder “Go ahead, take the darn chicken.”

Sound anything like the last patent appeal you filed? If so, it may not merely be a coincidence. As noted by the Patent Prospector, here is how examiners at the United States Patent and Trademark Office receive credit for the work that they do:

Restriction requirement = 0 counts
First action rejection = 1 count
First action allowance = 2 counts
Second action non-final rejection = 0 counts
Final rejection = 0 counts
Abandonment = 1 count
Allowance after attorney reply = 1 count
RCE = 1 count
First action rejection after RCE = 1 count
Examiner’s response to an appeal brief: 0 counts

Not surprisingly, some of the the things that take more time actually receive less credit. Under those guidelines, why would anyone spend much time preparing a final rejection for which the USPTO gives no credit? The guidelines seem to encourage simply refiling the initial rejection as a final rejection regardless of how well the inventor addressed and argued over the initial rejection. Now contrary to what some have opined, patent examiners are actually a pretty smart group of individuals. It is the guidelines that are the problem. What some might view as unfair examining is actually the examiners making the most efficient use of their time. It is the Patent Office’s promulgation of a skewed compensation system which results in these inefficiencies.

Drafting a response brief is one of the most time consuming things an examiner does. And what does an examiner get for all this work? 0 credits. As the patent prospector deftly notes, the USPTO compensation system rewards examiners for filing a final rejection, even if the inventor has overcome all of the examiner’s initial rejections. The system forces the examiner to call Roshambo. The inventor spends dozens of hours and thousands of dollars drafting an appeal. The skewed compensation system of the USPTO then just encourages the examiner to withdraw the appeal and file a new, non-final, rejection.

In light of the foregoing, it is easy to see why in 59% of appeals heard by the Board of Appeals and Patent Interferences (BPAI), the BPAI sides with the USPTO. The 59% figure does not take into account thousands of costly appeals inventors filed, but the USPTO withdrew before losing. As such, the 59% number is meaningless. At the very least, it is certainly not any indication of the proportion of the time the USPTO was right in forcing inventors to undertake the extremely costly appeal process.

That is not to say that the examiners and the BPAI are not doing quality work. While I have no numbers to support my position, the empirical evidence I have gathered over the last decade and one half indicates that both groups continue to produce high quality work, despite being increasingly overburdened under oft-times thankless conditions.

Instead the problem lies with the USPTO itself. Forcing examiners to drive inventors toward expensive appeals, which are eventually dismissed, undermines confidence in the entire patent system. Using the fees paid by inventors to actually compensate overworked examiners more for the quality, rather than the quantity of their output, would regain the trust of inventors, the loyalty of examiners and the faith of the public the USPTO was designed to assist. It would end Roshambo.

Brett Trout

Hat tip to Roshambo gold medalist Nate-Dogg for introducing me to the sport.

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