BPAI: Reducing the Backlog
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos
The Board of Appeals and Interferences (BPAI), like other areas within the USPTO, have experienced increased growth, leading to a large backlog of ex parte appeals. With the new Post-Grant Review processes set forth in the America Invents Act (AIA) fast approaching and BPAI resources being diverted to prepare for those new proceedings, there are concerns this backlog may continue to grow. As a result of the AIA, on September 16, 2012, the BPAI will become known as the Patent Trial and Appeal Board (PTAB) as it adds Post-Grant Review and inter partes review proceedings, to its current workload of ex parte appeal cases.
In recognition of this additional workload and in anticipation of the new processes beginning at the end of fiscal year 2012, we continue to look at how the USPTO can reduce this backlog. Chief Administrative Judge James Donald Smith blogged about the topic in December 2011 and he discussed streamlining the appeals process for applicants and examiners. This effort, and the new regulations resulting from it, was prompted by comments received at a USPTO public roundtable in January 2010 and a notice of proposed rulemaking in November 2010.
This is just one avenue which we are pursuing as we are continually looking for ways to improve the patents appeals process. In fact, public perception has suggested a high number of pending applications were sent to the BPAI from the Patent Technology Centers (TCs) unnecessarily. In response to this perception and because of our desire to decrease the backlog of ex parte cases, the Patent TC Directors working on a BPAI task force enlisted the help of the Office of Patent Quality Assurance (OPQA). OPQA reviewed a sample of 1,300 pending applications at the BPAI. This review was intended to determine if some of the cases most recently sent to the BPAI from the patent corps were truly ripe for appeal.
Results of this review found a low number of reviewed applications containing deficiencies that would result in them not being ready for review by the BPAI. More importantly, this information gave the patent corps the opportunity to take an in-depth look at these sample cases to identify issues where further training could be provided. Examiners recently completed mandatory training on the above new rules for the BPAI, but there is more opportunity for improvement.
As we continue to work diligently to decrease the backlog, special attention has been given to design programs to help prevent applications from being sent to the BPAI when appeal is unnecessary. Our emphasis on interviews is designed to help examiners and attorneys resolve as many issues as possible—if not allow the application—before appeal. Our Ombudsman Program is designed to assist applicants and their representatives to bring the examination back on track when the process is not working as intended, thus avoiding appeal where possible. One of our latest efforts encourages examiners to hold interviews after final and, if possible, move those applications to allowance rather than appeal.
While we work toward preventing unnecessary appeals, the BPAI is working to reduce the current ex parte backlog and to prepare for the new post-grant review and inter partes review proceedings resulting from AIA.
Our goal is two-fold, 1) to serve you as quickly as possible when you need to appeal and 2) make sure that we do everything possible to resolve issues before the appeal route is chosen.