Scott Daniels | March 23, 2010

Patent applicants enjoy a very high rate of success at the PTO Board in overturning examiner rejections.  The opposite is true for patentees appealing final rejections in reexamination proceedings.

This dismal record for patentees in reexamination was demonstrated anew this past week.  Of five reexamination appeals decided, the Board affirmed the rejections in four: Ex parte Nestec, 90/007,664; Ex parte Baxter, 90/007,730; Ex parte Baxter, 90/007,751; and Ex parte Baxa, 90/007,816.  In the fifth case, Ex parte Space Systems/Loral, 90/008,130, the validity of certain of the claims was confirmed, but the rejection of the broadest claim was affirmed.

This difference in results at the Board exposes a significant difference between original examination of application claims and reexamination of patent claims.  In the former, appeals are usually pursued only where the applicant believes that there is a high likelihood of the Board reversing the examiner’s rejection.  In absence of such an expectation of success, the applicant is free to present new arguments and claim amendments to overcome pending rejections.  With reexamination, though, the patentee is typically limited in its number of attempts to persuade the examiner and is therefore commonly forced into an appeal regardless of his expectation of success at the Board.

Another reason for the patentee’s low success rate at the Board may be the thoroughness of the rejections made by the Central Reexamination Unit (CRU), sometimes running into the hundreds of pages.

The likelihood of a particular reexamination rejection being affirmed always depends upon the facts of that case – still any party or court attempting to anticipate the result of an appeal must consider the Board’s past record in affirming the CRU.

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