Are these appeal timing estimates correct?

PatentLawPic375

The PTO is asking whether these numbers are accurate under the newly finalized Appeal Brief rules. (This will impact whether the Whitehouse allows the new rules to be implemented). Comments are due by August 8, 2008, to Susan Fawcett (Susan.Fawcett@uspto.gov), who will in turn be required to provide them to OMB. 

The numbers above include “the time to gather the necessary information, prepare the briefs, petitions, and requrests, and submit them to the USPTO.” 

Notes:

36 thoughts on “Are these appeal timing estimates correct?

  1. Thirty hours for an appeal doesn’t seem grossly off the mark, particularly if one includes all the time from the initial filing onward engaged in legal research and analysis that ultimately ends up in an appeal document. Of course, it depends upon how much time one spends polishing the final product for form.

    Fifteen hours to request to supplement a prior filing with a document, or to request an extended page limit seems absurdly long. Even assuming that one is going to get an affidavit or two to back up that request, it is hard to imagine spending more than half a day on something like that. It is almost a throw away pleading and should be done from a form and handled mostly by a paralegal.

    The five hour figure for a Reply seems short relative to the figure for an Appeal. I ordinarily (in motion practice and non-patent appeals anyway) typically spend on a Reply about half as many hours as it took to write the initial appeal. If one is talking about an appeal that took 30 hours to do in the first place, 15 hours for a Reply makes sense. One would certainly expect a Reply to take longer than the other kinds of motions.

  2. ” Interesting thread.

    I remember when I said, a few months back, that I could write a simple appeal for 2-3 grand and I got attacked.

    The law is typically easy, and the facts are typically straightforward.

    The arts in which I practice are simple.

    Rarely do i have a case with enough nuance to force me to the books for hours on end.

    I have, however, worked for clients who would think the job done shabby were I not to have billed 10 grand on the appeal.”

    The arts in which I practice are not so simple (I deal with a lot of semiconductor fabrication) and I can, most of the time, do a quality job on an appeal for $3k if I’m not going to argue dependents. I think the amount of time spent depends on prosecution strategy. Personally I dislike appeals and only like using them when I’m not getting anywhere with the examiner and he is dead wrong. In such a situation, I’m very familiar with the art being applied and have spent many hours (in office actions) coming up with every argument that can be made. Therefore, my appeals usually just involve me reiterating my past arguments and fleshing them out more with every quote I can find to support my position, etc.

    Point of discussion for other practitioners — how often do you use pre-appeals? I use them when references don’t show claim elements, yet the examiner asserts that they do. When I’m appealing an improper combination of references, I don’t bother with the pre-appeal, as you tend to lose most of those.

  3. “30 hours is a fair median (not average) number”

    Where’s Weary Lex when you actually need him/her?

    Mean is one kind of average. Median is another kind of average, and mode is yet another. “Mean” is what the average punter means by “average”, but that doesn’t mean that the average punter is right, if you know what I mean.

  4. Interesting thread.

    I remember when I said, a few months back, that I could write a simple appeal for 2-3 grand and I got attacked.

    The law is typically easy, and the facts are typically straightforward.

    The arts in which I practice are simple.

    Rarely do i have a case with enough nuance to force me to the books for hours on end.

    I have, however, worked for clients who would think the job done shabby were I not to have billed 10 grand on the appeal.

  5. I have found that office actions tend to have smaller budgets. Accordingly, like pds, I argue independent claims and, where the budget permits, meaningful dependent claims and dependent claims that were poorly rejected.

    Even with important inventions, clients often bristle at larger budgets for office actions. Accordingly, I do what I can do under the budget. But when the appeal comes, I do whatever it takes, which takes much more time. For important inventions, this can easily exceed 30 hours. My clients typically don’t opt to appeal for unimportant inventions.

    That said, it appears from some of the postings that many practitioners appeal just because the examiner is wrong. If so, those appeals may be significantly easier to prepare and 30 hours would be adequate.

  6. “I usually do not argue the separate patentability of dependent claims until appeal, unless I am willing in my next response to amend the independent claim to include the limitations of that dependent claim.

    How about the rest of you people?”

    I will only argue dependent claims if they are dependent claims which the client would be happy with, re-written as an independent claim. Otherwise, there is not much point.

    In the case where I don’t know which dependents the client cares about (not uncommon at all with foreign clients), before an appeal, I will have written the client a letter stating that I believe I can argue the patentability of dependent claim x and to please let me know if they would approve of amending the independent claim to incorporate the subject matter of that dependent.

    Certain foreign clients will neither read my letter nor respond, in which case I will use my best judgment. If the dependent isn’t too narrow, I will argue it and any others that I feel I can argue. If the dependents are all too narrow, I’ll appeal.

    One foreign client only seems to care about getting a patent, even if it’s a narrow piece of garbage that nobody will ever infringe or want to license. For that client alone, I’ll always argue dependents.

  7. Appeals are too varied to put down “estimated number of hours” figures. I think my range has been from about 5 hours to about 50 hours so maybe 30 hours is a fair median (not average) number.

    Likewise, handling of dependent claim rejections in response to office actions depends on a lot of factors. Not the least of which is the directions given by in-house counsel.

    MHO, YMMV, etc.

  8. Appeals are too varied to put down “estimated number of hours” figures. I think my range has been from about 5 hours to about 50 hours so maybe 30 hours is a fair median (not average) number.

    Likewise, handling of dependent claim rejections in response to office actions depends on a lot of factors. Not the least of which is the directions given by in-house counsel.

    MHO, YMMV, etc.

  9. Appeals are too varied to put down “estimated number of hours” figures. I think my range has been from about 5 hours to about 50 hours so maybe 30 hours is a fair median (not average) number.

    Likewise, handling of dependent claim rejections in response to office actions depends on a lot of factors. Not the least of which is the directions given by in-house counsel.

    MHO, YMMV, etc.

  10. Appeals are too varied to put down “estimated number of hours” figures. I think my range has been from about 5 hours to about 50 hours so maybe 30 hours is a fair median (not average) number.

    Likewise, handling of dependent claim rejections in response to office actions depends on a lot of factors. Not the least of which is the directions given by in-house counsel.

    MHO, YMMV, etc.

  11. “Sometimes a reference cited against the dependent claims simply does not show the claimed subject matter.”

    In that situation I may or may not mention the examiner’s error. When I don’t, I throw in a sentence that I reserve the right to present arguments pertaining to the remaining dependent claims, but that it is not necessary at that time (e.g., because no prima facie case had been established). Sometimes if there are several clear errors I may pick out one as an example of the many present.

    “Do you ignore that defect in the office action until appeal?”

    Yes, sometimes, to the extent explained above. Once in a while, a reference used to reject a dependent claim is light years more relevant to the independent claim than the “primary” reference the examiner used. In those situations, I would sometimes advise to discuss the reference and the differences, and even amend.

    Not one glove fits all situations, but most of the time I do not argue dependent claims until it would be necessary, for the reasons stated above.

  12. “How about the rest of you people?”

    I argue dependent claims all the time. The two main categories of dependent claims I will argue are: i) dependent claims with which the client would later be satisfied if the independent claim doesn’t make it and ii) dependent claims in which the examiner’s analysis isn’t even close.

    I usually don’t spend a lot of time on dependent claims, but if the some of the limitations just aren’t shown by the cited passages, I’ll point it out (e.g., “the examiner relied upon column 4, lines 13-30 to teach ‘X, Y, and Z,’ as recited in claim 2, however X and Y are not found in this passage”)

    My thought is that if I let the examiner slide on lots of the dependent claims (in which the examiner didn’t put any work into the analysis), then the examiner will think that I’m not being thorough and will try to cut corners on the independent claims. I want the examiner to know that I don’t just read the examiner’s arguments as to the independent claim, but I look at all the claims, and sloppy/poor arguments will be identified regardless of the claim.

    A lot of the decisions made by examiners regarding patentability are simple judgment calls. While one examiner may think one claim construction is too broad, another one will think it is reasonable. Depending upon the examiner and his/her mood, the same claim could be rejected or allowed. If the claim construction is what my independent claim hinges on, I want to give the examiner every incentive to have the judgement call fall on my side. I want the examiner to think that if he/she is going to rebut my argument as to the main argument, he/she is also going to have to clean up the sloppy work on the dependent claims.

    Unless the dependent claim is a really important one, however, I’m not going to argue a close call on a limitation … I’ll save that one for the appeal brief. However, when the examiner is clearly in error, I have no qualms pointing out those errors when it comes to the dependent claims.

    One exception is that if the Examiner’s analysis really isn’t close (perhaps he/she overlooked a limitation altogether), I may not argue the dependent claims knowing that the examiner will likely come up with a new rejection. However, if the analysis on the dependent claims is really sloppy, then I may point that out in the hope that the examiner doesn’t give me a sloppy rejection the next time.

    As you can tell, I have no hard and fast rule as to dependent claims. However, I have found arguing dependent claims to be a useful part of my practice.

  13. I usually do not argue the separate patentability of dependent claims until appeal, unless I am willing in my next response to amend the independent claim to include the limitations of that dependent claim.

    How about the rest of you people?

  14. John wrote: “I never argue dependent claims until appeal”

    Sometimes a reference cited against the dependent claims simply does not show the claimed subject matter.

    Do you ignore that defect in the office action until appeal?

  15. john – don’t really disagree with anything you said (in particular, I’ve only argued dependent claims once, and it was roughly in the situation you described), except with respect to time spent on appeals. i expect that the time spent on appeals is widely variable depending on the prosecution strategy, which explains why some of us say 8 hours is reasonable, and others say 30 hours might not be enough.

    for clients who won’t authorize an appeal until it’s clear that the argument is getting nowhere with the examiner, preparing an appeal argument largely consists of regurgitating the prior argument (and the added time comes in on preparing the summary and discussing caselaw when necessary, as you mentioned). appealing directly from a new claim rejection is unlikely to happen for those clients.

    on the other hand, for clients willing to appeal at every opportunity, and/or who want to avoid making certain arguments until absolutely necessary, little of the work for the appeal is done already, and I can see why it would take far longer than 8 or 10 hours.

  16. Preparing an appeal usually lakes me less than 30 hours – more like 16 to 20 hours. Of course, some of the more difficult ones can take almost a week.

    Believe it or not, I find a good percentage of my time is spent writing the summary of claimed subject matter. That can be a minefield that should be taken very seriously, in my opinion.

    II, I never argue dependent claims until appeal, and only then when the client wants to pay for it (might advise to do so if the rejection seems it may be decided with equal probability either way). Also, why create a history about things that should be allowed along with their allowable independent claims?

    Also, discussing caselaw with examiners seems like a waste of time and money until appeal. Again, estoppel creation should be avoided.

    Finally, I often get rejections applying new art (e.g., after amending the claims). If the rejection is bad, an appeal would not simply repeat what was previously done.

  17. In my experience 30 hours is far too high. In most cases, I think an appeal is called for (or at least, the client will authorize one) when the issues are well-developed, but the Examiner won’t budge. So you should just be repeating arguments of record, and making sure you haven’t missed any arguments that you should have made. It shouldn’t take 30 hours to do that. 8-10 hours is reasonable. Maybe 15 hours for an especially long appeal, for example when you need to argue a large number of claims separately.

    now, when the new rules go into effect, I could see a 20 or 25% bump in time.

    As for not making arguments because you’re estoppel-averse, what exactly are you doing leading up to an appeal? Filing replies that aren’t fully responsive and hoping that the examiner will allow the application? In my opinion, if you’ve got arguments that will lead to allowance, but you aren’t making them until appeal time, you’ve been wasting time until the appeal. Your arguments are going to end up in the file wrapper anyway, and you’ve just charged your client 30 hours for an appeal that may not have been necessary. but i suppose that SF’s clients could be willing to pay for prosecution strategies that other clients won’t. do you prosecute for innovator drug companies, by any chance, SF?

  18. “What about run-around time? A prosecutor can spend a ton of time dealing with bounced briefs (attorney and examiner) for non-compliance. Bouncing is frequently without good reason. How much time do we spend checking status? And what about all the time spent just getting to the point of appealing?”

    I make sure my brief’s comply. My assistant double checks that they comply for me.

    With respect to checking status, to what do you refer? Chasing around inventors? That can be a hassle, although I have my assistant do most of that for me. Likewise, I have her deal with asking examiners the status of something (ie. I won a pre-appeal, yet it’s 3 months later and I have not received another action).

    Having an organized, intelligent assistant is a must for prosecution, imho. There is so much correspondence to chase around and deal with.

    Time spent to get to the point of appealing? You mean responding to office actions, something which I can bill for? Why is that a hassle? Non-billable activities are the hassle. I of course try to resolve each case in the most expedient manner possible for my client, but if an examiner is difficult and I must keep going back and forth, I’m not going to cry about it.

  19. What about run-around time? A prosecutor can spend a ton of time dealing with bounced briefs (attorney and examiner) for non-compliance. Bouncing is frequently without good reason. How much time do we spend checking status? And what about all the time spent just getting to the point of appealing?

  20. “The above comment is yet another example of why I could never be a prosecutor and, instead, limit myself to patent litigation.”

    I’m assuming your comment was in response to my questioning about what clients will pay 30 hours for an appeal brief ;) Yes, in prosecution, there is the added hassle of, most of the time, having the client dictate what you may bill. However, there are plenty of benefits to prosecution. Some litigation colleagues of mine are constantly traveling and often under a lot of stress. I don’t travel, I live a fairly stress free life, I’m home at a reasonable time to see my wife and my son, and I think I make the same money they do.

  21. To add more nit-picking to the fun, I ask, do your chances of appealing to the tribunal (and therefore of winning the case) go up slightly when you write “none has” instead of “none have”. None means “not one” right? Are the judges nit-pickers? And do they prefer other nit-pickers? If so, should clients favour patent attorneys who are grammatically sound?

  22. “The above comment is yet another example of why I could never be a prosecutor and, instead, limit myself to patent litigation.”

    “above,” in this context, is ambiguous. But, assuming you’re referring to my comment, are you suggesting that proper usage of the English language is not important in patent litigation?

  23. The above comment is yet another example of why I could never be a prosecutor and, instead, limit myself to patent litigation.

  24. Thanks, sidekick, for picking up the slack.

    Note that as a matter of style, most professional editors are likely to suggest the addition of a hyphen, in addition to using the correct word. Thus: estoppel-averse.

    See Garner’s “A Dictionary of Modern Legal Usage,” under the entry “Phrasal Adjectives,” for more.

  25. “what kind of clients do you have who will pay for a 30 hour appeal?”

    ones that realize I need the extra time to ensure I don’t accidently write “adverse” instead of “averse”

  26. SF,

    what kind of clients do you have who will pay for a 30 hour appeal? Most of our large client’s complain if we go over 8 hours for an appeal. But that’s usually plenty of time for me to make my arguments, support them fully with quotes, citations, and figures, etc.

  27. I think the 30 hour appeal brief may be low for many cases.

    Appeal briefs are often where the applicants “finally reveals his/her hand” because they are so estoppel adverse and are typically only willing to go on the record with everything when it’s do-or-die time on appeal. Consequently, applicants must spend the time articulating what may have been unspoken below. Also, with the page limit, it will take more time to craft tighter arguments.

  28. The Appeal Brief number is too high, but in comparison, the Reply Brief number and the Request for Rehearing numbers are too low.

    The Reply Brief is typically when the Examiner finally reveals his/her hand and there are just so many juicy nuggets of Examiner error to point out.

    The Request for Rehearing (if needed) is when the BPAI summarily dismissed all of your arguments and decided to turn a blind eye to the facts and/or law. Honestly, however, I think it is a waste of time. However, when you actually do it, it can easily be as much time as an Appeal Brief. **Dennis** this would be a good little research project, I wonder what percentage of times the BPAI actually changed their mind. My guess is very low (<5%). If you are going to file a Request for Rehearing before the BPAI, you might as well go before the Federal Circuit.

    As for the Petition to Increase Page Limit: 15 hours????? What kind of Petitions are they talking about? I wonder if they are going to put a page limit on the petitions as well?

    One important number that isn’t included in those figures is the $$$. This is high billing rate work.

    Another tidbit to consider is the high number of Appeal Briefs received as compared to the number of Appeal Briefs actually making it to the Board (on pace for about 5600 this year). This means that the USPTO believes only 1/4 of the Appeal Briefs actually make it out of the appeal conferences?

Leave a Reply

Your email address will not be published. Required fields are marked *

You may use these HTML tags and attributes: <a href="" title=""> <abbr title=""> <acronym title=""> <b> <blockquote cite=""> <cite> <code> <del datetime=""> <em> <i> <q cite=""> <strike> <strong>