Thursday, March 06, 2008

Do BPAI affirmance numbers give an accurate picture of "quality"?

In a post --Appeallusion--, Patenthawk starts with data on BPAI decisions that appeared on Patently-O, but quickly gets into
the underlying gamesmanship of "counts" in examination practice at the USPTO. Contrary to a widely-circulated urban legend from the patent reform folks [that examiners get more points for mindless allowance], the system gives an incentive for brief final rejections.

The point of the argument -->

Forgetting for a minute about compact prosecution, let's walk a short mile in an examiner's shoes. An examiner writes up a non-final rejection, rejecting all the claims over the prior art. The attorney responds and traverses all of the rejections. Let's assume the attorney makes some valid arguments and the examiner agrees that the rejections should probably be withdrawn. The examiner still has three options: 1) withdraw the rejections and allow the claims; 2) withdraw the rejections and find new prior art to write a second non-final rejection; 3) maintain the rejections and issue a final office action. Option 1 usually won't fly based on the current management mentality of "reject, reject, reject." Option 2 will chew through numerous hours for zero count. Option 3, although also zero count, takes less than an hour.

So, option 3 it is. Worst case scenario: the applicant files a notice of appeal, the examiner is forced to withdraw the final rejection, and then at that point allow the application or find new prior art. In this case, the only loss is the hour or so it took to write up the final rejection. Best case scenario: the applicant abandons the application or files an RCE. Sweet! Free count! And the examiner saved countless hours.

The relevance to the Patently-O piece -->

This constant gambling by examiners cause many notices of appeal to never result in an appeal that reaches the board. Additionally, the dice rolling skews the board affirmance rate, masking actual examination quality, but reaps sweet numbers for the PTO to parade to the public.

See IPBiz post Eleven easy pieces for obviousness under 103?

Separately, see Patent Reform in Congress by Ted Frank, wherein Mr. Frank gives us a pre-cite to the upcoming
Bessen/Meurer book -->

Since the late 1990s, patent litigation costs have outstripped patent profits.[9]

9. Id. (citing JAMES BESSEN AND MICHEL J. MEURER, DO PATENTS WORK (forthcoming 2008)).

IPBiz notes that there ought to be a law against citing to a work citing unpublished urban legends. By the way, reference [8] was Michael Fitzgerald, A Patent Is Worth Having, Right? Well, Maybe Not , N.Y. TIMES, Jul. 15, 2007., already discussed within IPBiz. This also sort of reminds one of how some patent reformers cited to Quillen and Webster for a 97% patent grant rate, even though no such thing was in Quillen and Webster. Patent reform is filled with urban legends and "facts" which aren't really true.

See also Ted Frank in overlawyered discussing troll tracker Rick Frenkel:

Just as I was about to say I needed to revise my top-ten blog list to include the excellent anony-blogger Patent Troll-Tracker, I learned from today's Recorder and WSJ that he has revealed himself as Rick Frenkel, Cisco IP attorney.


Patent lawyers often seem to be of a different stripe than other lawyers, and there is a similar patent-law-blogging community largely separate from the other law-bloggers. The commenters go mad at Crouch's blog over the Frenkel revelation because Cisco is a strong patent reform supporter. Elsewhere: IPBiz; TechDailyDose; NetworkWorld; 271Blog; Mises Blog; and the anti-reform Patent Prospector.

IPBiz wonders why it was not included as being "anti patent reform."

Note: Lawrence B. Ebert, Patent Reform 2005: Sound and Fury Signifying What?, New Jersey Law Journal (July 18, 2005). Lawrence B. Ebert, Patent Reform 2005: Can You Hear Me, Major Tom?, Intellectual Property Today, pp. 32-34 (June 2005)



Lawrence -- thanks for the note. Good to know there are True Facts, Factual facts, false facts and "Patent Reform Facts"

Note -- I recently put together a group of Congress folks responding to a Special Issue on IP -- that THE HILL -- congressional newspaper was doing on March 4th -- last Tuesday.

In only two days I was able to get opposition statements from Marcy Kaptur (we LOVE HER!!!) and Dana Rohrabacher -- (we care for him)

AND I got Dr. Raymond Damadian the inventor of the MRI to pop for and write a GREAT full page add against the Patent Deformers with Better or more interesting statistics where are -- well -- startling.

I'll send copies of those articles when I finish sending this response to you.

Also would appreciate it if you'd look at MY new blog You might find it interesting and AND AND -- you might want to contribute to it -- but sit the site doesn't allow responses -- please just send me emails with whatever you feel might match the subject.

All the best,
George Margolin

11:43 AM  

LAWRENCE -- thanks for the plug on my It's fun doing a blog where you can actually say it like YOU think it is or should be.

As you'll note I'm also puting some of my cartoons there for the world to see, admire or -- in the case of the Coalition for Patent Fairies -- HATE.

All the best,
George Margolin

4:56 PM  

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