It’s a brutal scenario. You filed your appeal brief. You filed your reply brief. You waited and waited for the PTAB to render a decision. They finally do and, YES!, examiner reversed on all counts. You wait a few more months for you notice of allowance, but it never shows up. Instead the examiner reopens prosecution and issues a new rejection.
So how common is this? As with most things prosecution related, it varies widely by art unit.
Next Event After Board Reversal, by Decision Year
As shown in the chart above, in 2017 only 8% of applications were reopened after a complete reversal. And that number has improved to only 5% so far in 2018. These numbers seem reasonable to me, although I really have no factual basis for that judgment. It’s also good that they are improved over 2015 and 2016, which I assume were a bunch of reopenings based on Alice happening while the appeal was pending. These numbers should also keep going down as long as appeal keep getting faster (less time for new art to come to light while the appeal is pending).
Next Event After Board Reversal, by Art Unit Group (Since 2010)
The chart above shows: (1) total board decisions since 2010; (2) number of those decisions which were total reversals; and (3) percent of the reversals where prosecution was subsequently reopened. Clear outliers on this metric are:
- Our good friends 3620, 3690, and 3680 reopened after 38% of 967, 38% of 425, and 28% of 881, respectively (Here is yet another metric where we are almost certainly seeing a string Alice effect) These numbers should come way down once all pending appeal were filed after Alice.
- 3790 (Medical Instruments, Diagnostic Equipment, and Treatment Devices) reopened 28% of 130
Finally, I will note a bit of surprise that 3720 and 3740 (which have pretty terrible reversal rates) are actually near the low end on this metric having reopened only 6% of 816 and 4% of 1285, respectively.
If you are curious about the reversal rate of any particular examiner, you can always check BigPatentData Examiner Statistics.
You think 5% is reasonable? What do you think it is in the EPO?
If an appeal is pending for 2 or 3 years, I think new art coming to the examiner’s attention in the mean time in 5% of the cases does not sound too crazy. Of course, that number should fall with appeal pendency time and also as the patent office adopts improved search technology.
Now, if the new rejections cite no new references, that is a huge problem. If the new rejections cite only references that the Examiner reasonably should have found, that’s also a problem, but how do we define what references fall in that category? If we could define that, then a semi-objective analysis of the reopened office actions could be run.
Does EPO actually publish such a stat? If you have it I would love to see it.