The number of appeals being filed at the BPAI level has increased significantly in recent years. In 2005, roughly 3000 appeals were filed. In 2008, that number had doubled to roughly 6000. See http://www.patentlyo.com/patent/2009/01/bpai-appeal-sta.html. Moreover, the rate of reversal has apparently dropped from a 40% reversal rate in 2005 to a 20% reversal rate in 2009. Again, see http://www.patentlyo.com/patent/2009/01/bpai-appeal-sta.html. Obviously, one can expect that a greater number of appeals from the BPAI will now be making their way to the CAFC.
One important practice tip that might be of interest to some readers is that requesting oral argument at the board level can provide a possible procedural advantage. Former Administrative Patent Judge William F. Smith of Woodcock Washburn in Atlanta has noted in some AIPLA presentations that the merits panel of a case being orally argued will generally convene a pre-hearing conference where all Board members on the merits panel will meet to review the issues to be argued. In contrast, a case presented solely on the briefs is in most cases initially considered by one member of the merits panel and then conferenced with a second member of the merits panel. If the first two members agree on the disposition of all the issues in the appeal, the draft opinion is drafted reflecting the conference decision. Thus, the third member of the merits panel will see the decision for the first time when it is circulating and already has two signatures. Therefore, it behooves an appellant to request oral argument because the appeal initially receives the consideration and insight of all three ALJ’s about the merits of the case rather than just two.
It has been reported in recent months that the Board is now requiring ALJ’s to provide a justification as to why they need to write a dissenting opinion before receiving credit for it. See http://www.patentlyo.com/patent/2009/05/bpai-shuts-down-dissent-in-favor-of-efficiency.html Thus, there is now even less incentive for an ALJ to draft a dissenting opinion that might be enlightening when the case is appealed to the Federal Circuit.