Three Reasons To Reconsider Your Patent Appeal (And The Hidden Value Of Lists)

You may consider waiting to write that long list of grounds for appeal. The number of points you enumerate may bear more weight in your case’s final decision than you first thought.

1. Assume Backlog Means Quicker Consideration Of Your Arguments

To begin, the Board of Patent Appeals and Interferences (BPAI) is severely overloaded. In fact, the BPAI is behind on opinions for more than 20,000 pending appeals—a number that is only increasing.[1]

To catch up, each case will need to be read more quickly and efficiently than before. With so many appeals to review, there will be little tolerance for errors or frivolry. Thus, if you aim to join the appellate fight and win, your legal arguments better be, well, appealing.

2. Mimic The Concise Style of BPAI Opinions In Your Appeal

In addition, since 2009, the number of words per BPAI opinion has declined at an alarming rate. In just two years, the average number of words per opinion has dropped from over 3,000 words to almost 2,000 words, according to Dennis Crouch of the Patently-O Blog.

Not only has the average words per opinion changed drastically, but the median words per opinion has also changed notably. The median opinion from February 2009 contained 60 percent more words than the median opinion from January 2011, says Crouch. This means the board has become less and less verbose, and likely prefers you to be as well.

3. Determine If A New Chief Judge Means Changes In Your Patent Appeal

Finally, there’s a new lawmaker in town. To fill a vacancy that has been open since October of last year, the United States Patent and Trademark Office finally announced a new Chief Administrative Patent Judge.

As of May 8, 2011, James Donald Smith has been serving as Chief Judge in the backlog swamp, and who knows what changes this Chicagoan will bring.[2] Research Judge Smith’s background and his past (precedent) to determine whether or not he will be sympathetic to your cause. Hint: Start with Duke University Law School and end with Dewey & LeBoeuf LLP.[3]

And, if you couldn’t tell from this blog post already, arguments are best understood in to-the-point, succinct lists. WiredpreviewUnconvinced? Read this month’s Wired magazine, which heralds the success of a list-making site,, and its various mobile app counterparts.[4] The humorous web portal has 7.3 million unique users each month. The site’s success is based on its ability to “crowdsource and filter and other buzz-worthy things.”

It’s important to find a hook for your audience (say, a judge or patent board) and filter subject matter down to the most critical (content managers for commission six article items in order to edit them down to the five best).

The result is a list of popular and prolific points that sell. So, with this in mind, you should be able to create a case that is equally captivating as “The 7 Most Ridiculous Cases of Misplaced Priorities” and “9 Words You’ve Used Today With Bizarre Criminal Origins.

Now, attorneys, get back to what you’re really reading, “7 Items You Won’t Believe Are Actually Legal.


For more information, read “Top 10 Mistakes in Arguing on Appeal to the BPAI,” or “Looking to Avoid Patent or IP Lawsuits? Try Google First.”






[4] Leckart, Steven. “Why Numbered Lists Are Comedy Gold,” Wired. June 2011.


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