irving_kayton.jpgJon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office has (proudly?) highlighted the fact that the allowance rate for patents is currently 42%.  This is in contrast to allowance rates in excess of 70% just eight years ago.  So, did patent applications really get that much worse in just a few years?

Also, the percentage of Board of Patent Appeals decisions in which the examiner is affirmed or affirmed in part has increased from 51% to 69%. Finally, since the pre-appeal brief program was established in midyear 2005, the percentage of applications reviewed under the program in which the examiners action is deemed correct has increased from 45% to 56%.

The drop in the approval rate of patent applications has increased the need for filing appeals, making patent protection more complicated, expensive and difficult to obtain.  In response to the changing winds, Prof. Kayton’s Patent Resources Group is introducing a new comprehensive course designed to train professionals to effectively manage appeals to the USPTO.

The course, entitled “When, Why and How to Effectively Appeal to the USPTO Board of Appeals and Interferences,” will teach attendees when to file an appeal to the USPTO, considering the nature of the examiner’s rejection(s) and the legal and technological issues involved.

The course rolls out on October 18 during Patent Resources Group’s upcoming Advanced Courses program in Santa Ana Pueblo, N.M.  The course will be taught by William F. Smith, who was an Administrative Patent Judge on the Board for 19 years.

The course comes at an opportune time, with the BPAI’s new rules going into effect in just a few months.  This course could help patent law practitioners save their companies millions of dollars in appeals prosecution.

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One Comment

  1. It is premature to say “the BPAI’s new rules [go] into affect in just a few months.”

    Before the appeal rule can be enforced, the PTO must take several steps to gain OMB approval under the Paperwork Reduction Act, and implementing regulations, 44 U.S.C. § 3501-3520, and 5 C.F.R. Part 1320, especially §§ 1320.8, .9 and .11. Until OMB issues PTO a “control number” and PTO “displays” it on its rule specifying format and content for appeal briefs, the Appeal Rule will remain nominally on the books, but the PTO can’t enforce it, and cannot penalize any non-compliance. 44 U.S.C. § 3512; 5 C.F.R. § 1320.6.

    The first step in the Paperwork clearance process has to be done by the PTO not later than the Notice of Proposed Rulemaking, 5 C.F.R. § 1320.11(a). But the PTO’s July 30, 2007 Appeal NPRM specifically stated that the PTO was not seeking Paperwork clearance from OMB. Too bad, so sad.

    The Markush rule is currently in Regulatory Flexibility Act purgatory, and the Appeal Rule is currently in Paperwork Reduction Act purgatory. If you have money available to help me send them both permanently to hell, kindly email me at