A US Patent Application that is finally rejected by a patent examiner may be appealed to the Board of Patent Appeals and Interferences (“BPAI”). The increase in the number of appeals would not come as a surprise to members of the patent bar because the rejection rate for new patent applications has increased dramatically since the 2007 landmark US Supreme Court Decision of KSR v Teleflex. The KSR case limited patentability by eliminating the requirement that a patent examiner show that there is some teaching, suggestion or motivation (known as the “TSM test”) in the prior art to combine references for an obviousness type rejection of the claim(s) of a patent application. The TSM test was not eliminated, but became just one factor to consider. The result has been patent examiners now routinely combine prior art references to assemble the elements in the claims of a patent application to form a basis for rejecting the patent application. This has led the increase in appealed patent applications. In 2008 6,385 applications were appealed, while in 2009 15,500 applications are projected to be appealed at the current appeal rate.
The increase in appealed patent applications has resulted in a delay from filing of the appeal, to decision of from 21 to 37 months. The BPAI has said that it has plans to bring in more judges, together with patent attorneys and paralegals, but it admits that funding is not currently available for an increase in staffing.
For now, the most effective strategy, for the inventor and his/her patent attorney, is to avoid an appeal altogether by interviewing, in person, with the patent examiner, and at least one Supervisory Patent Examiner. Collectively a realistic evaluation of the prior art cited against the patent application can be made to define the patentable subject matter to result in an allowance of the patent application.
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