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. 🙄