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Fourth Time’s the Charm (Record for Most Ex-Parte Appeals)

What is the record for most ex-parte appeal decisions in a single application? You might be thinking that I gave it away in the title. You’re right, I did. The answer is four. But there’s more…

Two Applications Had Four Board Decisions

The distinction of having four PTAB/BPAI opinions is shared by two applications:

09/352,472 – “BASAL THUMB JOINT IMPLANT” (Biopro, Inc.)

  • March 2003 – Examiner Reversed in part
  • June 2007 – Examiner Reversed
  • Jan 2011 – Examiner Reversed
  • September 2012 – Examiner Affirmed
  • December 2012 – Allowance after an examiner’s amendment

10/074,765 – System and Method for Video Compression (DirecTv)

  • April 2009 – Examiner Reversed
  • May 2011 – Examiner Reversed
  • March 2013 – Examiner Affirmed
  • September 2017 – Examiner Affirmed
  • October 2017 – Allowance

I previously posted that reopening prosecution after after an examiner reversal is rare. Obviously these applications bucked that trend.

Too Much Uncertainty in the System

I haven’t dug into the merits of these applications, and I don’t know whether the applicants or the USPTO are more to blame, but the patent system as a whole suffers from prosecution histories like these. Aside from the wasted resources on both sides, there is a tremendous amount of uncertainty introduced by file histories such as these.

Application 09/352,472 was filed in July 1999 and was effectively a “submarine patent” until it issued in 2013. And with 1682 days of PTA it doesn’t expire until Feb 20, 2024. Glad I didn’t take my dotcom riches (of which I had none) and go into the basal thumb joint implant business!

10/074,765 was filed February 2002 and with 4503 days of PTA it doesn’t expire until January 2039! Good thing no one cares about video compression patents. 🙄