Issue 129 | October 31, 2003
Success in Patent Office Appeals
May Depend on Technology Area
 The success in overturning the rejection of a patent application may be influenced as much by the technology at issue as the merits of the case. An analysis of the Patent and Trademark Office’s internal, administrative appeals shows that the reversal rate varies widely depending on the Patent Office’s Technical Centers. For the recently completed fiscal year (2003), the Board of Patent Appeals and Interferences reversal rate varied from 25% for Chemical and Materials Engineering (Tech Center 1700) to 50% for Mechanical Engineering, Manufacturing and Products and Designs (Tech Center 3700).

Tracing the results back to 1998, it is readily apparent that the PTO Board has consistently sided with patent applicants over examiners in appeals coming out of all of the Tech Centers, except two. The Tech Centers for Chemical and Materials (Tech Center 1700) and Designs for Articles of Manufacture (Tech Center 2900) are the only centers with a greater affirmance rate than reversal rate over these past six years.

The most dramatic change over the past six years was with appeals from the Technical Center for biotechnology cases (Tech Center 1600). Its reversal rate surged from 23% in 1998 to 49% in 2003.

What do these statistics possibly mean? For one thing, the high (and in some instances escalating) reversal rates suggest that PTO's attempts to minimize unnecessary appeals are falling well short of their goal. Given the substantial cost and delay to pursue an appeal to the PTO Board, the high reversal rate of final rejections is small satisfaction to applicants with patentable inventions. Improved vetting of final rejections before an appeal must be pursued to the PTO Board would benefit both inventors and the PTO.

More detailed information on the PTO appeal data and tabulated statistics for each Technical Center is available for the author Ramon R. Hoch, of the Washington, D.C. office for Fitch, Even, Tabin and Flannery. Ray can be reached at his e-mail address: rhoch@fitcheven.com, and welcomes comments on his analysis.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.