What standard is the standard at BPAI?

BPAI – Board of Patent Appeals and Interferences. This is the first Board you appeal to when there’s no reasoning with the application’s examiner.

Here is the standard procedure: you file a Notice of Appeal (NOA) with the BPAI, then you have two months (extended to seven months if you pay the fees) to file the Appeal Brief, then the examiner has to file an answer (it usually takes him about two months) and then you have another two months to file a Reply and a Request for Oral Hearing (RFOH). Up to the moment the examiner files his answer, he can still withdraw the rejection and issue another rejection on new grounds or issue a Notice of Allowance. So from the moment you decide to appeal an examiner’s rejection to the BPAI you have anywhere from six months to one year until you get before the Board members.

But let’s get back to the BPAI. They basically have to decide if you can get the patent or not. No new matter can be introduced from the moment of the rejection. That means you can present your case on the evidence you presented the examiner and the examiner can only use as evidence the references in the last rejection. However, the burden of proof should be on the examiner: they have to prove (by preponderance of the evidence – the lowest burden of proof standard) that the invention is not patentable. Does this happen?

Here’s a short story to better understand the system. If you are not in the business of patenting, then you should know that there has been a drought of issued patents during the last 4 years of the Bush administration (from a 65% allowance rate to 35% allowance rate). This had an impact on the application backlog (as more and more applications were bitterly fought over for years, more new applications were filed each day). It also had an impact on appeals: the applicants would choose to rather present the before the BPAI than file RCEs over RCEs. As more and more appeals were filed, some examiners started to withdraw their last rejections. This in turn increased even more the application backlog. It quite resembles an infinite loop…

But let’s see what happened to appeals that did get before the BPAI. The majority were solved by taking the examiner’s side. Like the applicant had the burden of  proof (by preponderance of the evidence, of course) of showing why the examiner is wrong. I thought the standard was the other way round. So, can anyone tell me what is the standard at the BPAI?