The oncoming changes to PTO continuation practice is predicted to significantly increase the number of cases appealed to the PTO’s Board of Patent Appeals and Interferences (BPAI). In an effort to avoid a new bottleneck, the patent office has proposed a new set of rules designed to help the Board “continue to resolve ex parte appeals in a timely manner.” The rules appear to place more of a burden on applicants to submit appeals that are both clear and precise.
Notes:
- No public hearing will be held.
- Comments are due September 28, 2007 to BPAI.Rules@uspto.gov.
- For further information, contact Fred E. McKelvey or Allen R. MacDonald at 571-272-9797.
- Read the new rules.
Mark:
I propose a safe harbor of 25 pages; however, there has to be a proportionality rule in order to satisfy due process. Examiners should be required to submit rejections in 14pt font and with the same page format as required for appeal. This would result in the Applicant being afforded no fewer pages in the Opening Brief than that required for the Examiner to set forth each rejection asserted during prosecution and addressed in the Opening Brief.
I see proposed rules with page limits on applicants’ submissions (appeal brief, reply brief, etc.) but no limits on examiners’ submissions (rejection, examiner’s answer, etc.)
Did I miss something?
If these rules are modeled on the rules of courts (and I’m not a litigator) aren’t the court’s page limits applied to all parties?
Can someone explain?
It’s easy. In order to maintain the constitutional structure of our Republic (which I don’t believe is doing very well at this moment because of Vice President Dick) a person is always entitled to seek relief in the Courts (interestingly enough the last time legal relief was wholesale denied by the Dred Scott Decision which, by the way, led directly to the Civil War) Now a key requirement to seek redress for administrative actions is to exhaust administrative remedies . . . otherwise you are barred. This is where the problem could be present. We need to see what the Rules provide in order to better understand the situation.
I can understand why there is so much interest in this, because the Executive Branch has been losing quite a lot against Congress and the Courts. As there are no Rules I cannot say if the same pose Constitutional infirmities. Even if there were, I doubt I would post the same on this website. I would rather have the Commissioner Answering a complaint. It’s more interesting that way. I too have always wanted to go to the Supreme Court and argue a case. In fact, I am totally astonished at the opportunity that is quickly approaching. I had no idea that Bush could screw-up the patent system so thoroughly in such a short time. It is really quite exciting and I do look foward upcoming court battles. Vive la liberte.
“Giving the USPTO the right to prevent continuations while maintaining an Applicant’s right to sue the director for a patent coupled with the decision as to whether a case has too many continuations filed is tantamount to allowing the USPTO to decide control the jurisdiction of the Courts with respect to an applicant. I don’t think that is gonna fly.”
Sorry to be so dense — Can someone explain?
14 Point Times New Roman!!!
They are lucky I don’t use the Comic Sans font.
Lazerus:
The reasons one goes to the full appeal is two-fold. Firstly, winning on a pre-appeal counts against term aggrandizement. Winning an appeal counts toward term aggrandizement. Secondly, a full appeal, especially with the new rules, will force an examiner to more carefully consider the case. What I have found is that the rejections are so off-the-mark in about 20% of the cases I am handling, that I feel compelled to bring this to the Board. I only wish that we could obtain venue in my state. There are a few cases that I wish I could file in court and make more public to find out exactly what is happening in some of these cases. I will admint, however, that in the vast majority of the cases I am handling, I have very cogent rejections.
LL:
I agree completely with your point number 1).
As to your point 2), you must work in a different art unit that I. My biggest problem is that I don’t know what taught elements are being applied against my claimed elements. If I’m lucky, I might get a concise cite to 2-3 lines in the reference, and I can muddle my way through and figure out how an examiner is applying a case. However, my art includes many non-standard terms or terms that can be used in very different ways, and the cites I get are sometimes 20-30 lines long and I’ve seen them as long as well over 10 columns.
In most instances, the terminology in the claims is not found in the prior art, which means that a certain amount of claim construction has taken place to arrive at the examiner’s conclusion that a particular reference shows a particular element. However, for every 20 cases that I see in which this situation might happen, I’ll be lucky to actually receive a stated claim construction in 1 of them.
Your comment about primaries is dead on. Some of the worse rejections I have seen are from primaries. They actiosn from primaries tend to be the shortest, and some of the best I have seen are from new examiners.
As for pre-appeal conferences, they may make a comeback. I’ve been avoiding them recently because it has been too easy for someone to “check the box” that says proceed to appeal. If an examiner was forced to write a 1 or 2 page response to back up the examiner’s rationale, then I think this procedure would be used much more frequently because at least I know that someone is actually looking at my arguments.
One of the reasons I avoid them is because when the examiner reopens prosecution and I believe the new rejection is just as bogus as the old rejection, I have to pay the notice of appeal fee over again if I want to appeal. On the contrary, if I appeal and prosecution is reopened, then I can put the application straight back into appeal without having to repay the notice of appeal fee.
“I do know that, for the last few years, they rarely amend (mainly to overcome a 112, 2nd; rarely to overcome art unless to absolutely nails the claim without ANY doubt; definately not to overcome a 103) and they appeal ALL final rejections.”
This might be a good strategy. If you have the reputation for appealing everything, examiners may attempt to do a better job upfront.
Responses to a few previous posts:
1) As to the trend of affirtmances vs reversals at the board, I would expect that a lot of this has to do with a) the increase in appeal conferences; b) pre-appeal briefs & conferences that weed out the really bad rejections; c) SPEs being (at least informally) rated on the affirmance rate of appeals. All of these will tend to the likelyhood of not sending up cases that the examiner & SPE feel relatively strong about.
2) As to the quality of office actions, beleive me, the quality can be a LOT worse. Recently, I have had cause to review a very substantial number of cases from throughout our TC. While there definately have been some bad rejections, the vast majority have been decent to good. Probably 90+%, at least, do point out the sections of references relied upon, provide motivation, etc. Are they all perfect? No. But most are reasonable and are good enough to allow the applicant to understand how the art is applied and able to respond to the action. The biggest weakness I have seen are probably more in secondary refernces not being great (i.e., stretching a 2ndary refernce to make the 103). The newer examiners tend to be writing better actions, overall. If anything, it is some of the primaries that take too many short-cuts (probably to eitehr make production or they feel the reference speaks for itself. Neither right, but that is probably why).
3) Re HP, I heard that they had a new hear of IP a few years ago & changed their prosecution process. I do know that, for the last few years, they rarely amend (mainly to overcome a 112, 2nd; rarely to overcome art unless to absolutely nails the claim without ANY doubt; definately not to overcome a 103) and they appeal ALL final rejections. Not making any judgements, just observations of facts.
4) I would expect that PRE-APPEAL filings will go up even more. It is probably cheaper (or am I wrong? Lawyers, let me kwow.) for the applicant to have the lawyer write up the 5 page (max) pre-appeal that to write up a full brief. Based on the stats I have seen, about half of the pre-appeals result in reopining & either a new rejection or allowance. Seems the easier way to go. Or is there some reason why it is better togo the full appeal brief route?
thanks,
LL
10x???? Maybe.
In my mind, there are 3 types of cases you take to the board.
1) Dogs that cannot be saved by additional amendments, and this is your last best hope for getting something.
2) Really important cases in which you could amend to narrow the claims, but the application is too important to give up subject matter that you are willing to flip a coin at the board.
3) Really bad rejections.
I think that those attorneys/clients that were inclined to appeal 1) and 2) aren’t going to change much in number. However, I think the numbers of attorneys that start taking applications falling under 3) are going to increase dramatically.
As I noted earlier, many attorneys/clients, as a matter of practice, don’t appeal at all. These continuation rules are going to force a change in that practice. However, like most things in life, once you’ve got a 2-3 under you belt and a little experience, your trepidation wanes and you begin to feel much more comfortable doing it.
As more attorneys/clients become more comfortable with the appeal process, they will avail themselves of it much more frequently. As such, even if the PTO finally does relent on the continuation rules sometime down the road in an attempt to ease the backlog from the Board, I suspect that paradigm as to how applications should be prosecuted before the USPTO will have changed for many attorneys.
Unless, over the coming years, Examiner’s stop issuing bad rejections and start issuing applications after the first or second action, then I suspect that your 20% figure (of all new applications being appealed) may be too low.
PDS above said that the number of appeals may double or triple by next year. Ha! I think the number will increase ten times or more. How many cases do you get allowed without getting a final rejection? In my experience, not very many (unless you don’t do your client justice and take narrower claims than you believe you are entitled to). So that’s why we have RCE’s, to avoid the appeals process and work with the examiner some more. With the new continuation rules, My guess is over 20% of all new applications will now be appealed. Getting your appeal heard will now take much longer than the pendency of getting a first action. Eventually, the USPTO will have to repeal or modify the continuation rules when this disaster happens.
Wish I could have responded to square deal earlier, but I have to work for a living. I called the examiner 4 times, each time resulting in him yelling at me – yes – yelling at the top of his lungs, and this before I even said a word. I worked at the PTO for 4 years, and I can attest that there are numerous insane people there – truly insane. I called his SPE and the director to no avail. They told me they couldn’t do anything about it. I even called some of my friends from the PTO who now are group directors (oops, TC directors), SPEs, and have other lofty PTO jobs, but to no avail. Fortunately, the Board did not make me argue the 2 cases when I showed up for oral argument (as did the examiner).
Patent Prospector Had the Following Article Mentioned In Which VP Of HP Was Touting the Patent Reform Act-My Response Follows:
Article:
The number of patent cases and the size of damages and settlements in the United States in just the past few years have been staggering. Without desperately needed reform, our patent system will continue to be a burden on our courts and our nation’s top employers — putting at risk innovative technologies, our nation’s economic growth and good-paying jobs.
Even the U.S. Supreme Court has recognized these problems. The justices themselves widely criticized the current system. Chief Justice John Roberts called it “worse than meaningless.”
With so much at stake, Congress should stand on the side of innovation and working families and pass the Patent Reform Act.
– Mr. Ted Clark, senior Vice President at Hewlett-Packard, in the
Houston Chronicle
My response:
Wasn’t HP censured a while back for bringing in immigrant engineers from India and paying them 40% of what their U.S. counterparts made? Wasn’t HP forced to pay to the State of California millions of dollars becaue they required salaried workers to use their vacation to take time-off when wanting to save on expenses?
In short the statement by HP should read as follows:
The number of jobs sent overseas and the size of the unemployment roles resulting therefrom in the United States in just the past few years have been staggering. Without desperately needed reform, our fellow citizens will continue to be burdened by the incessesant drive of our nation’s top employers to increase profits— putting at risk our children’s future, our nation’s economic growth and good-paying jobs.
Even the U.S. Supreme Court has refused to protect the very population that allows it to exist. The justices themselves widely criticized any attempts to produce an egalitarian culture in which the citizens rule by majority vote and thereby undermine Chief Justice John Roberts rationale for increasing of judicial salaries.
With so much at stake, Congress should stand on the side of working families and pass legislation criminalizing transfer pricing, hiring workers overseas and hiring illegal immigrants.
Yeah. I meant reversals. It seems, however, that prosecutors routinely relied on the absence of a TSM (or some other reason for combining) as the primary argument. Now, with KSR, they’ll really have to think through their arguments.
I am not sure what you mean, SF. Affirmance rates represent wins by the examiner. Reversals represent win by the Appellants. So when affirmance rates go up, as they did in June, that means that examiner rejections are being sustained at a higher rate and the patent applicants are losing.
On your logic, however, I am sure that appellants will begin to argue other reasons than absence of TSM, particularly since Ex parte Smith made it pretty clear that that argument is going to fail if it is the only argument.
It’s possible that the affirmance rates could go up after KSR because appellants may articulate more persuasive reasoning — rather than merely relying on the absence of a TSM.
I just checked the years previous to 2006. Affirmance rates/Affirmance in Part/Reversal (total may not add up to 100 due to remands, dismissals, etc.)
I would say that the month of June 2007 was a significant anomaly, given a trend of affirmances around 30-40%. Even the whole year of 2007 is shaping up to be an anomaly, with 53% total affirmances. Looks like KSR may have had some slight effect.
2007 – June – 62% affirmed/ 13% affirmed in part / 22% reversed
2007 Year until June 53% affirmed/ 14% affirmed in part / 27% reversed
2006 whole year 44% affirmed/ 12% affirmed in part / 35% reversed
2005 whole year 38% affirmed/ 12% affirmed in part / 40% reversed
2004 whole year 37% affirmed/ 12% affirmed in part / 37% reversed
2003 whole year 36% affirmed/ 10% affirmed in part / 39% reversed
2002 whole year 30% affirmed/ 9% affirmed in part / 37% reversed
2001 whole year 30% affirmed/ 9% affirmed in part / 37% reversed
I think looking at March and April 2007 versus May, June fails to see the effect of KSR. The Federal Circuit had already begun retreating with Dystar, and the BPAI had to be influenced by this dynamic in early FY 2007. If you go to the previous year statistics, which are shown in PDS’s post above, you can see that in 2006, examiners were affirmed 43.7% of the time (ie about 40%) with 12% affirmance in part. It is likely (though by no means certain) that 103 rejections match this dynamic. If so, the change is somewhat more dramatic, going from about 44% to 64% due to KSR.
Immediately pre KSR (March, April 07), looking only at appeals that involved 103 rejections, the “affirmed” rate was 58%. Immediately after KSR (May, June 07), the affirmed rate bumped up to 64%. Not a big deal.
As predicted by some …
I suggest a petition drive to congress for oversight to remove the patent haters in upper pto management – you can bet this is being driven by political hacks and not the career staffers. Hamilton would be proud, the best way forward for america is the concentration of wealth into a few megas corporations.
Well where are those darned rules? Is it unreasonable to think that they may abandon this endeavour?
pds wrote: “The people that need to change the system are sitting in the USPTO.”
I agree with pds. Take for example the proposed rules restricting continuation. If this debacle teaches us anything, it is that the PTO is resolutely unresponsive to external pressures. They know what they want to do, and they do it, constituents be damned. The PTO has proven to us by its actions that it believes that all the public notices, comments, hearings, etc. are simply pro forma.
“For PDS, not every appeal brief is withdrawn by the office. In the 2006 timeframe, my personal experience showed many appeals were RCEd before decision by the BPAI by the applicant. Some were even abandoned before decision without an RCE. None were withdrawn by the office. So without specific statistics on how many of the 18,500 appeal briefs filed were withdrawn by the office, and how many were withdrawn by the Applicant, your data is worthless.”
All I wrote was “I know that many appeals are kicked out before reaching the board, but 82%??” I didn’t characterize how or why they were kicked out, I just wrote they were kicked out. As such, my data has “worth” in that it shows that a very small fraction of cases actually make it to the board.
Its been my experience (and I file LOTS of appeals) that at least half get reopened, and I have not abandoned any.
“You clearly expect the worst. If so, work to change the system.”
The worse is already here in terms of quality (or at least I hope so … I would hate for it to get any worse). The people that need to change the system are sitting in the USPTO. Change happens from within, not from the outside. I must admit that in certain large organizations change can be initiated from the outside, however, it is usually because a particular large client has decided to leave, which initiates some soul searching by the large organization.
However, I doubt this will happen with the USPTO, which has a captive client base, and an apparent disdain for its paying clients that permeates every level of the USPTO (from the examiners to the commissioner).
Square deal said:
“The post KSR affirmance rate is over 60%, and I bet (I have not checked) that most of that change over the previous 40% affirmance rate are 103 rejections that are now being affirmed.”
Actually I did check as part of the research we did for the Intellectual Property Today article I mention above.
Immediately pre KSR (March, April 07), looking only at appeals that involved 103 rejections, the “affirmed” rate was 58%. Immediately after KSR (May, June 07), the affirmed rate bumped up to 64%. Not a big deal.
What was surprising, however, was how often the Board cited KSR when they were reversing an examiner. It turns out that the more flexible approach of KSR cuts both ways. As a matter of fact, in two cases the Board reversed the examiner because the combination of the prior art references that the examiner proposed went against the common sense of a person of ordinary skill in the art. Remarkable.
While I agree that the new RCE and claim rules will likely not serve any useful function, whether it is reducing the backlog, easing the job of the examiner or assisting the applicant in obtaining a patent (or abandonment), other than complaining here, what action have you taken?
So patentdood, in the case where “res ipsa” was cited, did the examiner, perhaps negligently and without proximate cause, mean “inherently”. If the examiner was actually relying on a Tort doctrine in the examination, did you call the examiner and ask him/her to justify it? If they tried, did you call the SPE? If the SPE didn’t respond, did you call the director or the commissioner’s office? Or did you just let the examiner think that this was okay?
For PDS, not every appeal brief is withdrawn by the office. In the 2006 timeframe, my personal experience showed many appeals were RCEd before decision by the BPAI by the applicant. Some were even abandoned before decision without an RCE. None were withdrawn by the office. So without specific statistics on how many of the 18,500 appeal briefs filed were withdrawn by the office, and how many were withdrawn by the Applicant, your data is worthless.
I do agree that the new rules will lead to more appeals. In the 1960s (if you look at PTO stats), many more cases were appealed on a relative basis (and the affirmance rate was much higher). I don’t know if more appeals will be a good thing (leading to higher quality) or a bad thing (with multiple reopenings that torture applicants). You clearly expect the worst. If so, work to change the system.
With regard to Mr.T’s comment that a new ground of rejection could be put in the answer, that is, of course true. However, given that this requires the signature of a director, it is difficult.
pds, I tried to post many of the same views regarding “mediocre” PTO work product, but the Patently-O software robot kept kicking it back until I removed all the criticism. Mr T is calm now.
Square Deal, a new ground of rejection can be presented in an examiner’s answer, and the client can decide at that point whether to proceed to the Board. This presents a middle ground where the examiner has one last shot correcting a supposed error.
On your second point, we pay for continuations and RCE’s. It’s about money paid to examine a different invention, consideration of references popping up on our end at any point in time, and reasons provided in a different thread concerning things like refining claims in view of market development. Your point has little to do with an examiner presenting improper rejections of claims on appeal.
Patentdood, I feel some of your pain, but cannot fathom $4.6B. We did, however, have one application where a restriction resulted in over $600,000 in divisional filing fees. Most examiners don’t care about costs, and never will.
“Further, based on Mr. T’s logic, the PTO could argue that allowing applicant further actions after an affirmance should not be allowed, since Applicant should have presented their best claims and best argument prior to appeal. But for the same reasons, that applicant may sometimes present new evidence or narrower claims, RCEs are permitted after affirmances.”
The new continuation rules change the equation. No longer are applicants allowed to present new claims with multiple RCEs. Instead, as best can be discerned, applicants will only be able to file a single RCE without jumping through some (unknown at this time) hoops.
On the contrary, there is nothing that prevents an examiner from reopening prosecution and applying new references time and time again, which is something I already see a great deal already. An examiner that withdraws a rejection, particularly a rejection that was already traversed by applicant in an amendment, means that the examiner has wasted applicants’ time and money.
Applicants should not be on the hook for the USPTO’s incompetance in doing a proper search. I cannot count how many times I have traversed an initial action without amendment, received a final action, appealed, and then had the rejection withdrawn. To me, I see this as an indication that an examiner isn’t doing his or her job until their feet are actually put to the fire (with the appeal). What is sad is that in the very many cases that I have had prosecution reopened after appeal, I can recall only one in which I amended the claims based upon the new reference. All the others I put back into appeal because the new art (and new rejections) are almost always worse than the first rejection.
The PTO is constantly squeezing applicants to fix the PTO’s own problem, which stems from a culture of mediocrity and “do as little as possible to get the action out” and “maximize counts by forcing applicants to file RCEs with premature final rejections.” However, the PTO doesn’t seem to realize that if the examiner did a better job in explaining their rejections (which is different than just writing conclusory statements), then the applications would proceed to allowance or abandonment much quicker and/or applicants would be quicker to submit narrowing amendments.
I have spoken to many attorneys that do not appeal at all (and know of many clients that do not like to appeal). These attorneys (and clients) currently respond to bad rejections with “clarifying” amendments and by filing RCEs. However, with the new continuation rules being put into place, I suspect that even those clients and attorneys will start to appeal rejections that deserved to be appealed. As a result, I suspect that the Board is going to get fed up, rather quickly, with the amount of [explitive deleted] that is being put out by the examining corp.
Based upon the statistics stated by the USPTO in their rules proposal, 443,000 patent applications were received in FY2006, and 18,500 appeal briefs were filed. What is interesting is that the PTO states in the following link
link to uspto.gov
that only 3349 appeal briefs were actually received at the Board for FY2006 (I know that many appeals are kicked out before reaching the board, but 82%??). Anyway, 9 months into FY2007, the number of appeals receaching the board has already hit 3309. link to uspto.gov
I suspect that with the new continuation rules, that number could easily double or triple by this time next year. I’m going to have a good laugh when the USPTO grinds to a halt when every other application being prosecuted gets appealed (despite the obstacle course presented by these new appeal rules). I suspect that the law of unintended consequences is going to come down very harshly on the USPTO.
Re square deal’s post. As an examiner, I too used to believe that the SPE or group director would be sane enough to overturn an outrageous rejection, but unfortunately that isn’t the case. Sure there are horror stories on both sides of the fence, but here are just two minor examples. I had to appeal two cases by the same examiner who has never – I repeat never – allowed a case, when he rejected my claims as unpatentable under the doctrine of res ipsa loquitur. The SPE or Group Director didn’t seem to catch that one, but fortunately the Board did. Then just recently, I had a US examiner in a PCT application to a sole inventor, which was a narrower CIP of a broader parent (which received no restriction or lack of unity in the PCT stage), assert that there were 4,619,327 separate inventions, and that my only option to have more than just one of the examiner’s “inventions” examined was to pay $1,000 per invention (THAT’s 4.6 BILLION DOLLARS – or 4 times the annual operating budget of the PTO), and argue the lack of unity was improper, and if they agreed with me, they’d refund my money.
The comments are an interesting mix of logic. Mr. T wants examiners to allow cases because the examiner applied the wrong reference, argument or caselaw. This is not consistent with In re Oelrich (CCPA 1981), which comments in a footnote that “Furthermore, res judicata does not have its usual impact when considering ex parte appeals, the public interest in granting valid patents outweighs the public interest in collateral estoppel and res judicata, particularly where the issue presented is not substantially identical to that previously decided.”
That principle applies to any case where the examiner reopens the appeal, since almost all of these cases probably have a different reference or argument. Mr. T would apparently rather issue invalid patents.
Further, based on Mr. T’s logic, the PTO could argue that allowing applicant further actions after an affirmance should not be allowed, since Applicant should have presented their best claims and best argument prior to appeal. But for the same reasons, that applicant may sometimes present new evidence or narrower claims, RCEs are permitted after affirmances.
When George says “So if an insane Examiner takes Official Notice that Claim 1-150 are novel because of a conversation he had with Julius Caesar”, I assume he means that the claims are “not” novel, otherwise the examiner would have just allowed the case. In that situation, hopefully the SPE is sane, or the Director is sane, and the rejection should never get out of the TC. I have certainly seen actions by primary examiners in which only a bogus 112, second paragraph rejection, or a completely unexplained 102 are presented. I haven’t seen a study, but I bet that at least some of MeAnontoo’s 30-40% win rate on preappeals are cases like this.
Finally, when Mark Nowotarksi talks about the 75% of post KSR obviousness rejections that lack a prima facie case, I assume he is just talking about the small fraction that are not being affirmed. The post KSR affirmance rate is over 60%, and I bet (I have not checked) that most of that change over the previous 40% affirmance rate are 103 rejections that are now being affirmed.
I would expect that most of the losing cases lack a “prima facie case”, since they are being reversed. I suppose some of the losing cases might have secondary considerations, but these represent a fraction of the cases.
pds, unless, of course, a newly published 102 date document is discovered. No fault here if such a document publishes in the interim period. However, this is becoming rare because of 18-month publication and examination backup.
Is it just me, or does this provide some hope that we may get more 2nd Office Actions that are NOT final? More like European practice, where you get to actually discuss the case and come to a reasoned conclusion with the Examiner before running off to the Board.
“I think only the Board or appellant should be allowed to reopen prosecution after an appeal, unless the examiner allows the case. Otherwise, it may be difficult to resist going Neanderthal on some poor PTO examiner or supervisor.”
I entirely agree. If the examiner believes the application should be made final or has had more than his/her fair shares of bites at the apple, then the examiner should either be forced to stick with the argument or allow the application (unless, of course, some new reference is applied that could not have been found/applied by the examiner).
If applicants cannot amend claims ad infinitum without requiring a justification (i.e., the new continuation rules), examiners should not be allowed to reject claims with new references ad infinitum.
Why does the patent office and the powers that be want to kill the innovation engine of this economy? Why change the law, change the rules, and change the obviousness standard all at the same time!!! This is insane!!!!
So if an insane Examiner takes Official Notice that Claim 1-150 are novel because of a conversation he had with Julius Caesar, the appeal may not be premised on failure to make a prima facie case”?
I think only the Board or appellant should be allowed to reopen prosecution after an appeal, unless the examiner allows the case. Otherwise, it may be difficult to resist going Neanderthal on some poor PTO examiner or supervisor.
I thought this paragraph (in the comments sections) reflects the USPTO’s ignorance as to what actually happens:
An example where an argument might not previously have
been made to an examiner might occur under the following fact scenario.
A first office action rejects claims over Reference A. Applicant amends
the claims to avoid Reference A. The examiner enters a final rejection
now relying on References A and B. Applicant elects to appeal without
filing a response under Rule 116. While applicants are encouraged to
file a response under Rule 116 to possibly avoid an appeal all
together, at the present time there is no requirement for an applicant
to file a Rule 116 response. Whether such a requirement should be made
in the future will be held in abeyance pending experience under the
rules as proposed, should they ultimately be promulgated.
******************
Essentially, the USPTO is “encouraging” applicants to file a responses after final (i.e., a Rule 116 response), and is contemplating making it mandatory. Of course, anybody who has failed a response after final these days knows what the response will be …. an advisory action asserting that the claims were not placed in condition for allowance and, if you are lucky, a one paragraph explanation as to why the examiner disagree’s with your argument. This, of course, is if you file a response that does not amend the claims. If you amend the claims, the likelihood that your arguments will be considered are even less.
Also, I wouldn’t be as dismayed by these new rules if the Pre-Appeal Request for Review actually reversed a healthy proportion of the clearly erroneous rejections made by the Examiner…
I had about an 80% success rate on those I chose to challenge via Pre-Appeal when it was first introduced. But now that success rate is down to around 30 – 40%.
And I don’t think my choice of cases to pre-appeal has broadened.
Yeah, this is ridiculous.
My Appeal Briefs average about 20-25 pages right now WITHOUT any of these additional provision, and at 12 point Times New Roman.
The only way this improves the efficiency of the Board is by not allowing applicants to present all available arguments.
To state just one example, sometimes it is helpful to argue several alternative arguments.
“The Examiner has failed to meet his burden of asserting a prima facie rejection under 103…”
“Even if the Board believes a prima facie rejection has been made, it must be reversed on appeal because the art is non-analogous…”
“Even if the Board finds the art to be analogous, the rejection should be reversed on appeal because the references do not disclose each and every element…”
“Even if the Board finds that the references disclose each and every element, there is no teaching, suggestion, or motivation to combine…”
etc., etc.
14 point Times New Roman?
14 point Times New Roman?
I don’t believe there is a mixed message. If the examiner fails to make a prima facie showing of anticipation or obviousness, then it’s not appropriate under the current law to point out the patentable distinction from the prior art.
What we cannot allow the BPAI to do is to recitfy failures of the examining corp to carryout their duties by facilitate prosecution at the board level. In this regard, by having a case bounce around several times between the board and the examining corps, the USPTO would, in effect, be creating submarine patents. In short, if the USPTO wants to patents to issue quickly, they should start with increasing examiner pay so that they retain examiners who have a great amount of experience and can demonstrate expertise with the patent process. Otherwise, the BPAI will have to suffer the consequences.
Nice post hp.
This is sickening. The examiner makes a completely unsupported nuisance rejection, makes it final despite a concise response pointing out the lack of a prima facie case and because of the new continuation rules (time will tell), the only option is to appeal.
But to appeal, you have to prepare a phone book sized federal court style appeal brief/status of the case package arguing not only the Examiner’s error – but the patentability of the claims themselves within only 25 pages stuck into the middle of all the mindless deterrent fluff now required. At a cost of ten thousand dollars, minimum. The BPAI minutia team then rejects your brief several times for different nits they manage to detect (one at a time), of which there will now be quadruple the possible “errors” to find.
And then when/if it finally gets to the Examiner for the Examiner’s response – he/she can just re-open prosecution or enter yet another new basis for rejection?
How is anyone but the mega corps going to patent anything meaningful in this environment? The sickening bought and paid for repug government for the highest bidder of the last 6 years has now unmistakably smeared its evil mark upon the USPTO.
Goodbye patents, hello trade secrets.
KCB said “I doubt the rules state as much”
Regarding 103 rejections, what the proposed rules do say is:
§ 41.37 Appeal brief.
(o) Argument.
(7) Rejection under 35 U.S.C. 103. For each rejection under 35 U.S.C. 103, if appropriate, the argument shall specify the errors in the rejection and, IF APPROPRIATE, specify the specific limitations in the rejected claims that are not described in the prior art relied upon in support of the rejection, AND EXPLAIN HOW THOSE LIMITATIONS RENDER THE CLAIMED SUBJECT MATTER UNOBVIOUS OVER THE PRIOR ART. A general argument that all limitations are not described in a single prior art reference does not satisfy the requirements of this paragraph. (emphasis added)
There is a bit of a mixed message here. The tone certainly suggests that applicants will be expected to do more than merely point out that the examiner has failed to provide a prima facie case. The “if appropriate” qualifier, however, technically keeps these requirements in line with judicial precedent since if the examiner has failed to provide a prima facie case, it would not be appropriate to explain non obviousness.
For the record, I just took a look at the statistics of obviousness appeals post KSR as background for a paper to appear shortly in Intellectual Property Today. 75% of the obviousness reversals were due to the examiner failing to make a prima facie case.
” (j) Table of authorities. A “table of authorities” shall list cases (alphabetically arranged), statutes and other authorities along with a reference to the pages where each authority is cited in the appeal brief, reply brief, or supplemental reply brief, as appropriate.”
More piling on. The goal here, clearly, is to make the appeals process so burdensome (read: expensive) on the part of applicants, that only the wealthiest applicants will bother fighting even the most outrageous Office Actions. This does not bode well for innovation in the U.S.
“Why, for example, should an applicant have to prove that the claims are not anticipated by the prior art when it is not clear that the examiner has established a prima facie case that the claims are anticipated by the prior art.”
I doubt the rules state as much, because that would be a requirement thgat is tantamount to ignoring Federal Circuit precedent. This would mean that the USPTO was promulgating rules so as to violate the Separation of Powers Doctrine and undermine Marbury v. Madison. I doubt the USPTO would take such a course.
“Applications only go to appeal when there is a rejection to be appealed.”
A rejection doesn’t mean a prima facie case has been made. In fact, most appeals I take to the Board argue that the examiner has failed to make a prima facie case.
Why, for example, should an applicant have to prove that the claims are anticipated by the prior art when it is not clear that the examiner has established a prima facie case that the claims are anticipated by the prior art?
> I guess the concept that the USPTO has the initial burden to establish that the claims are not patentable is dead.
Applications only go to appeal when there is a rejection to be appealed.
Last Comic Standing?
Nah.
Last Inventor Standing.
Perhaps I missed it, but do these rules immediately apply to all pending appeals once they go into effect? Will appeal briefs already filed have to be refiled to meet the new rules?
Although there is many things about these rules that I don’t like, I’m particularly intrigued by the following sections:
*****************
(4) Rejection under 35 U.S.C. 112, first paragraph. For each rejection under 35 U.S.C. 112, first paragraph, the argument shall also specify the errors in the rejection and how the rejected claims comply with the first paragraph of 35 U.S.C. 112 including, as appropriate, how the specification and drawings, if any, describe the subject matter defined by the rejected claims, enable any person skilled in the art to which the invention pertains to make and use the subject matter of the rejected claims, or set forth the best mode contemplated by the inventor of carrying out the claimed invention.
(5) Rejection under 35 U.S.C. 112, second paragraph. For each rejection under 35 U.S.C. 112, second paragraph, the argument shall also specify how the rejected claims particularly point out and distinctly claim the subject matter which appellant regards as the invention.
(6) Rejection under 35 U.S.C. 102. For each rejection under 35 U.S.C. 102 (anticipation), the argument shall also specify why the rejected claims are patentable by identifying any specific limitation in the rejected claims which is not described in the prior art relied upon in support of the rejection.
(7) Rejection under 35 U.S.C. 103. For each rejection under 35 U.S.C. 103, if appropriate, the argument shall specify the errors in the rejection and, if appropriate, specify the specific limitations in the rejected claims that are not described in the prior art relied upon in support of the rejection, and explain how those limitations render the claimed subject matter unobvious over the prior art. A general argument that all limitations are not described in a single prior art reference does not satisfy the requirements of this paragraph.
***************************
I guess the concept that the USPTO has the initial burden to establish that the claims are not patentable is dead.
These rules are a [expletive deleted] joke.
First, the Board asks an attorney to hold their hand to explain every nuance of the facts, the claims, the law, the arguments, the drawings, the Examiner’s arguments, etc. Then, the Board asks to have it done in less than 25 pages. I took the single section (41.37) that describes how the Appeal Brief is supposed to be prepared, and based upon their requirements of 14 point Times New Roman (apparently they have poor eyesight at the Board) and doubled spaced, that single section took up 12 pages.
Also, if you, as an attorney, screw up, you could face sanctions (41.56).
At first blush, I like your argument.
Amazing – the Patent Office is going to take its arcane rules where many Appeals are not accepted for silly administrative reasons and make them SILLIER! Ammazing. Where is the oversight?
This is yet adds fodder in support of the argument that Congress cannot grant the authority to the USPTO to prevent the filing of continuations while allowing a party to sue the Director for a patent. Jursidiction of the courts is solely within the purview of Congress. I submit that Congress can never allocate such a power to an executive agency, because it would destroy the Separation of Powers Doctrine. In short, this would mean that an executive agency could be created that would create its own rules, execute its own rules and adjudicate its own rules and determine who could or could not seek redress to the courts- I don’t think so. Giving the USPTO the right to prevent continuations while maintaining an Applicant’s right to sue the director for a patent coupled with the decision as to whether a case has too many continuations filed is tantamount to allowing the USPTO to decide control the jurisdiction of the Courts with respect to an applicant. I don’t think that is gonna fly. Any legislation to that end would be struck down by the Supreme Court.
Considering that Congress cannot grant this power I suspect that the new rules seeking to limit continuations are a fantasy that the backers of the same are soon to be awakened from. In short even if Congress amended 35 USC 120 to allow the Director to limit continuations, I would suspect that that statue would be void.
The real issue evolves around Congress’ ability to ad hoc deny an individual from seeking patent protection of subject matter in a continuation application that would otherwise be patentable, excepting for some procedural issue with the prosecution of a parent case.
I do look forward to reviewing these rules based upon the foregoing analysis.
Does anyone here really think Congress can grant to an executive agency the right to determine the juridiction of the Federal Courts?
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