It has been reported that the number of appeals filed in the U.S. Patent and Trademark Office from an Examiner’s rejection has increased by 70% from the previous year. The rise could be credited to the Supreme Court’s 2007 decision on KSR International Co. v. Teleflex which makes it easier for the Patent Office to establish that an invention is obvious, therefore making it not patentable during the application process.
The rise could also be due to impatience with the Patent Office over, what seems to be, its reluctance to approve Patent Applications for issuance. The Patent Office reported its pendency for average patent applications time to be 32.2 months in 2008 which is the highest it’s been since 2004 when it was 27.6 months.
Rather than filing continuing patent applications after rejection, attorneys are filing appeals and finding it to be a successful decision. With pressure mounting in the Patent Office to move applications along and overtime pay being suspended at least from June 21 through the end of the fiscal year (according to a U.S. Patent and Trademark Office internal memo posted on the blog of The Blog of Legal Times) many rejections are being made quickly and by Examiners with little experience, leaving an opening for attorneys to file solid appeals.
Clients are finding it more attractive to file expensive appeals in order to fight for the time and money they have already invested in a pending application rather than filing a new application.