35 USC 102 Reversal Rates for PTAB

The doctrine of anticipation under Section 102 is one of the most settled areas of patent law. A reference either discloses the features of a claim or it does not. True, there are nuances to the doctrine, such as inherent disclosure of the applied reference and the broadest reasonable interpretation of claim terms. But for the most part, to support an anticipation rejection, an Examiner must point to where in an applied reference the features of a claim is disclosed and the anticipation rejection should be on solid ground.

Because the doctrine of anticipation is pretty straightforward, one would expect that the frequency that an Examiner is overturned would be relatively low. But the appeals decisions of such rejections tell a surprisingly different story. Looking back at the past six months of ex parte appeal decisions from the Patent Trial and Appeal Board (PTAB) for those decisions involving at least one section of 35 USC 102 reveals that anticipation rejections are among the highest reversed rejections:

In 58% of the decisions, the Board reversed the Examiner for at least one appealed claim.

In 49% of the decisions, the Board reversed the Examiner for all appealed claims.

The data set included the 976 total decisions in which 35 USC 102 (all sections) was an issue in an ex parte appeal. A total of 481 decisions wholly reversed the Examiner on anticipation grounds, and a total of 85 decisions partially reversed the Examiner on anticipation grounds. Appeals from reexamination proceedings were not included in the data.

These data indicate that where the issue is anticipation of the claims, the practitioner has better than 50% odds of having the Board reverse the Examiner.



Why Analyze ex parte PTAB Appeals Decisions?

Welcome to the Anticipat Blog, where we are serious in analyzing appeals decisions at the Patent Trial and Appeal Board (PTAB). Here are a few reasons why.

We believe that the current patent prosecution process is expensive, inefficient and unpredictable. By sheer luck, an application can sail through to allowance for no other reason than it was assigned to a certain Examiner. For many other applications, several rounds of prosecution can be spent quibbling over egregiously unreasonable rejections before finally receiving an Office Action that should have sent in the first place.

We believe having more data can alleviate the expense, the unpredictability and the inefficiencies of the patent prosecution process. In particular, appeals decisions provide a realistic snapshot of how the Patent Office is ultimately applying patent law. With this data in mind, wasteful rejections can be shortcut rather than unnecessarily amending claims or adding more estoppel to the record.

Admittedly, not all the decisions are binding (only precedential decisions are authoritative while informative decisions provide guidance on the rules and practices of the PTAB). But when these thousands of routine decisions are aggregated, we believe that data set shows the trends and patterns that can be used to calibrate expectations for expense, predictability and efficiency of obtaining a patent.

Despite the promising uses, we think PTAB data (especially appeals decisions data) is currently presented in ways that are either difficult to use or misleading. At Anticipat, we believe in transparently cataloging appeals decisions through granular analysis of each decision. Indeed, predictive power is only possible when the necessary context is gathered by drilling down into the specific issues and outcomes for each appeals decision.

We hope you stay tuned for relevant posts on appeals data, where we will highlight trends and patterns, as well as developments and practice pointers from individual decisions. To subscribe to the daily decisions email, you can signup to the daily recap emails (or to a filtered alerts email) here.