October 18, 2016

“Analyzing Ex Parte Decisions at the PTAB Shows Wide Variability in Reversal Rates by Rejection,” AIPLA Patent Law Committee Newsletter, Fall 2016

By Michael Varco, Principal

Since July 25, 2016 the AIPLA PTAB subcommittee has been analyzing ex parte appeals decisions for specific issues and outcomes. We are not aware of such a granular examination of these types of decisions. Since July 25, we have reviewed 1009 of the 1776 total decisions for that time frame.11 The results reveal interesting differences in the reversal outcomes. Rather than the Board wholly affirming or reversing the rejections on appeal, we found that the reversal rates were more based on the type of rejection.

Thus, not all rejections are decided equally at the board. We discuss the results of each type of the most frequently decided rejections at the PTAB. They are: 1) §101 subject matter eligibility; 2) § 112; 3) § 102 Anticipation; 4) § 103 Obviousness; and 5) Non-Statutory Obviousness-type double patenting.

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This excerpt was taken from a recent article published in the AIPLA Patent Law Committee Newsletter for which Michael Varco was a coauthor.