How Effective are Pre-Appeal Brief Conferences?

As part of its appeal rules package, the USPTO has released further information on the role of pre-appeal brief conferences in the prosecution process. As its name suggests, the pre-appeal brief conference program involves a meeting that occurs before an applicant files the formal appeal brief. The "conference" is an internal meeting between examiners and does not actually include the patent applicant or its representative. Rather, the applicant submits a short (5-page) memo that is reviewed at the conference. The program was introduced in FY2005 as a mechanism for helping to avoid unnecessary appeals.

The table below shows that the number of pre-appeal brief conference requests has been steadily rising since being introduced. The results have stayed relatively steady. During the five-year reported period. 56% of the pre-appeal brief conferences resulted in a decision by the conference members that the examiner's rejection was proper and that the case should proceed to the BPAI. 38% of the conferences resulted in the examiner withdrawing one or more rejections and then re-opening prosecution. 4% of the conferences resulted in a decision that all claims were patentable. And, 2% of the conferences rejected the pre-appeal brief conference request as defective.

FY

Number of Pre-Appeal Brief Conference Requests

Percent of Appeals

Proceed to Board

Reopen Prosecution

Withdraw Rejections

Defective Request

2006

6,525

24%

55%

37%

5%

3%

2007

7,240

25%

56%

38%

4%

2%

2008

8,255

27%

59%

37%

2%

2%

2009

9,967

30%

56%

39%

3%

2%

2010

12,019

34%

56%

38%

5%

1%

Prior to the pre-appeal brief conference program, a majority of appeals cases never reached the Board because the rejections were withdrawn after the applicant filed its formal brief. The pre-appeal brief conference program appears to have shifted that decisionmaking process forward. Now, examiners are much less likely than before to withdraw their rejections after an applicant files its formal appeal brief. That decision is made at a separate conference termed the appeal brief conference. In FY2010, the appeal brief conference resulted in a decision to file an examiner answer in 59% of cases. That is up from 39% in FY2005. Thus, the pre-appeal brief conference program does not seem to actually reduce patent examiner workload. However, it does help speed prosecution and allows a substantial number of applicants to avoid filing the formal appeal brief.

In an e-mail, Foley partner Stephen Maebius focused on the relative rates of re-opening prosecution. Pre-appeal brief conferences are relatively more likely to determine that prosecution should be re-opened (and presumably a new rejection issued). As compared with the pre-appeal brief conference results, appeal brief conferences are much more likely to determine that all rejections should be withdrawn. Maebius writes that "re-opening prosecution may increase the chance of lengthening a patent term adjustment, depending on the dates associated with earlier periods of the prosecution history. This may be an advantage where immediate issuance is not an objective and patent life is more valuable at the end of the patent term as in the case of pharmaceuticals. . . . On the other hand . . . filing a full appeal may be a better strategy when gaining immediate allowance is the objective."

PDF of Rules with Data: http://edocket.access.gpo.gov/2010/pdf/2010-28493.pdf

90 thoughts on “How Effective are Pre-Appeal Brief Conferences?

  1. “…but what disturbs me more is that in this application it is apparent that at least one SPE and QAS have failed to meet minimum expectations as well.”

    You find that disturbing? Lulz

    The most useless, do nothing, know nothing people at the PTO are SPE’s and QAS’s. Expecting them to actually do any work is pretty futile. The sole reason they became SPE’s and QAS’s is so they wouldn’t have to do any work.

  2. The Pre-Appeal Brief Request for Review is not nearly as successful as it should be for one simple reason – the PTO continues to trust in Examiners and SPEs to do their job correctly without implementing any real detriment for failure to do so.

    I have filed three such Requests. In one application, I had requested an interview after final to discuss claim amendments for filing with RCE. The Examiner denied my request despite the fact that I said we would file an RCE, and despite the fact that it was a new grounds of rejection to be discussed. I then filed the Notice of Appeal with Pre-Appeal Brief Request for Review. Two or three months later I received a notice indicating that we would proceed to the Board. My clients decided they didn’t want to deal with the long appeal backlog, so we filed an RCE with minor amendments, and requested an interview. Upon conducting the interview, I found that the Examiner not only didn’t understand the invention, the claims, or the prior art, but was not even aware that there were method claims in addition to apparatus claims.

    It is my understanding that this Review is supposed to entail the Examiner, the SPE, and a QAS sitting down to discuss the issues raised in the five page brief. The Examiner’s complete ignorance as to this application indicates that not only did this meeting not occur, but that the Examiner had not even read the five page brief. I have long been operating on the belief that Examiners will fail to do their job more often than not, but what disturbs me more is that in this application it is apparent that at least one SPE and QAS have failed to meet minimum expectations as well.

  3. “I’d be curious about your readers view on another topic that I now see cropping about more and more: namely, after a 2.5 year favorable appeal, having the Examiners refuse to enter the BPAI’s decision, and instead ‘inventing’ another reason to reject the claims on almost identical arguments – even after they’ve been reversed. There seems to be a hard core rogue group in the PTO that doesn’t seem to get it.”

    This is why we need Mr. Kappos to put out a directive that any TC Director that wants to re-open prosecution after a reversal by the Board has to personally come to his office and explain the reasons for re-opening.

    How many TC Directors would authorize re-opening if that were required?

    My guess would be none.

    Lulz

  4. Interesting dialogue Dennis

    I’d be curious about your readers view on another topic that I now see cropping about more and more: namely, after a 2.5 year favorable appeal, having the Examiners refuse to enter the BPAI’s decision, and instead “inventing” another reason to reject the claims on almost identical arguments – even after they’ve been reversed. There seems to be a hard core rogue group in the PTO that doesn’t seem to get it.

  5. Please make sure there is a Kindle version. Thanks!

    Lolz – so theza could later decide oops we didn’t mean for ya to have that and delete it from your machine frm afar? No Thanks!

  6. If the ombudsman doesn’t want to make the examiner do his/her job, or either balks at the idea that the MPEP means what it says when specifying minima for examiner conduct, call me — I have ways to get compliance.

    Mr. Boundy rules.

    There’s a big section on administrative law and Chevron deference in my book that will be out in a few months, check out “Boundy Patent Prosecution” at Amazon.

    Please make sure there is a Kindle version. Thanks!

  7. “u should sign up for the email notification thing. That’ll shave all days off right there. Just check the action in PAIR.”

    I’m sure that is a game changer. Maybe it will now be possible for firms not located in DC to get roped into that business.

  8. Привет!!! Очень необыкновенная новость! С радостю буду читать и другие новости.

  9. “No. I mean the difference between the mailing date, entered by the Office on the Notice of Allowance, and the date on the Letter to Client forwarding the Notice of Allowance. As in, how many days did it take to go through the mail and arrive at your mailroom, get to your desk, and get dropped in the mail again. That number. Needless to say, it helps to have a DC mailing address. That shaves off a day or two right there.”

    O lulz, u should sign up for the email notification thing. That’ll shave all days off right there. Just check the action in PAIR.

  10. You mean they actually wants someone who can persaude the patent office to issue them a patent? What a crazy notion!

    No. I mean the difference between the mailing date, entered by the Office on the Notice of Allowance, and the date on the Letter to Client forwarding the Notice of Allowance. As in, how many days did it take to go through the mail and arrive at your mailroom, get to your desk, and get dropped in the mail again. That number. Needless to say, it helps to have a DC mailing address. That shaves off a day or two right there.

  11. When I was prosecuting, I personally had several used the pre-Appeal Brief conference several times and had the rejections withdrawn. Only once have I had to proceed to the Appeal Brief stage since pre-Appeal Brief conferences began.

  12. Lets be honest guys, honor > money.

    Major League LULZ comin from the one who, meh, will take down 200K no problem.

    The axiom “a f00l and his money will be soon parted” won’t apply to 6, only cause the f00l wont have money to begin with.

    Poor 6, no money AND no honor.

  13. Lets be honest guys, honor > money. Money is for getting someone to do what you want. Honor will get them to want to do what you want.

  14. “Working for Japanese clients can be difficult for many reasons. One example is if they ask you to file a trademark on something that is grossly grammatically incorrect, to the point of being ridiculous. But if you bring it to their attention, someone loses face, and that’s worse than prosecuting the ridiculous trademark to issue. For the same reason, they almost never want to give up on an application, no matter how good the art cited or the rejections. It’s better to amend the claims to the point of worthlessness in seeking allowance, continuing to file RCEs in perpetuity, than for the inventor(s) to lose face.”

    I lulzed.

    “Of course they find such f00ls. But there are consequences. For example, they track all kinds of statistics, like the number of days it takes you to send them the Notice of Allowance, and aonly top performers with respect to those ridiculous performance metrics retain that kind of work. As a reult, the law firms that do that kind of work have to be set up like Rube Goldberg machines designed to generate the performance matrics, and they aren’t equipped to handle other kinds of work. Then, when someone in Japan makes a mistake and they need someone to take the fall, the US law firm gets the shaft, and everyone has to find a new job.”

    I lulzed again. Sounds like someone is speaking from 1st hand exp.

    “they track all kinds of statistics, like the number of days it takes you to send them the Notice of Allowance, ”

    You mean they actually wants someone who can persaude the patent office to issue them a patent? What a crazy notion!

    “and aonly top performers with respect to those ridiculous performance metrics retain that kind of work.”

    So, what you’re saying is that only lawlyers that know how to prosecute properly retain that kind of work?

    I think the real question should be why so many lawlyers retain other kinds of work when they plainly fail so hard.

  15. They’d rather have honor than money, and they can’t find an American law firm willing to take the other end of that trade?

    Of course they find such f00ls. But there are consequences. For example, they track all kinds of statistics, like the number of days it takes you to send them the Notice of Allowance, and aonly top performers with respect to those ridiculous performance metrics retain that kind of work. As a reult, the law firms that do that kind of work have to be set up like Rube Goldberg machines designed to generate the performance matrics, and they aren’t equipped to handle other kinds of work. Then, when someone in Japan makes a mistake and they need someone to take the fall, the US law firm gets the shaft, and everyone has to find a new job.

  16. Working for Japanese clients can be difficult for many reasons.

    They’d rather have honor than money, and they can’t find an American law firm willing to take the other end of that trade?

  17. Working for Japanese clients can be difficult for many reasons. One example is if they ask you to file a trademark on something that is grossly grammatically incorrect, to the point of being ridiculous. But if you bring it to their attention, someone loses face, and that’s worse than prosecuting the ridiculous trademark to issue. For the same reason, they almost never want to give up on an application, no matter how good the art cited or the rejections. It’s better to amend the claims to the point of worthlessness in seeking allowance, continuing to file RCEs in perpetuity, than for the inventor(s) to lose face.

  18. “I’ll tell you one reason that a person I know working at a firm told me. Apparently all of that firm’s foreign clients do not believe in fighting the government, which they view appeals as being a form of. They believe in working with the government.”

    Indeed. There is a very real fear of losing at BPAI, and also a hesitation to even go to BPAI for unique cultural reasons. For many of the applicants mentioned above, they’d simply rather spend the money on RCE’s and continuations than spending it on appeal briefs.

    Additionally, what I hear (from someone who heard from someone else, Counselor) is that most of the applicants mentioned above tend to believe the examiner is almost always wrong because the examiner simply does not understand the invention, and often direct the practitioner to explain the invention better to the examiner.

    In actual practice, however, the differences in patent laws in different nations require USPTO to interpret claims differently from (for example) JPO, which sometimes necessitates rejection of claims that were allowed overseas. The applicant files RCE after RCE, not wanting to go to BPAI or to have patents in USA and Japan for the same invention with wildly different scopes of coverage. This will probably change over the next 30 years or so, as Japan’s youth have radically different social views and motivations from the post-war generation.

  19. Ping said: >>- those words hurt my feelings.

    Sorry Ping only the king of whining Malcolm (I am not a simian) gets to have words banned.

  20. to besmirch my own profession

    Iza didn’t know riding under the hooves of your horse with your underwear on your head was a profession that could be besmirched.

    If anything, that’dbe a step up.

    And Dennis, can we ban the use and appearance of “lulz” and “sockie” by anonymous posters? – those words hurt my feelings.

    /nasally Norbert voice off

  21. “His spreading sensationalist lies and disinformation to besmirch my own profession didn’t pop into your mind?”

    Your “profession”?

    Lulz

    You’re doing a mighty fine job of besmirching your own profession, sockie.

  22. Some of the QAS people … will base their opinion on a half hour review of the case…”

    And we have a winner in our “overstatement of the century” category.

    Only too true – most times Iza can find enough of the crrppy examination inside of ten minutes review of a case.

  23. “Some of the QAS people … will base their opinion on a half hour review of the case…”

    And we have a winner in our “overstatement of the century” category.

    Lulz

  24. 6: >>Heck, who knows, maybe we could spare a paltry >>1 billion (or whatever that number is, I >>forget off hand) to, oh, idk, feed all our >>school kids? Take decent care of homeless folks?

    6 making sense? I am looking out my window to find the pigs flying.

  25. “What lies and disinformation has Boundy spread?”

    Lulz, Boundy egged on Kat back in the day and constantly cited his nonsense even in this very thread.

    “It’s funny. You still can’t see what damage Dudas did, and what an atrocious director he was. ”

    No, I can see what “damage” he did, and what an “atrocious” director he was. I can understand all the grievances people had with his admin. I can also understand at least some of what he did was simply the first part in what will eventually happen to reform this nonsensical legacy patent system of ours that we’re burdened with. If patent law actually mattered more than a hill of beans to society (and if more than 1-3% of society understood patent law), and anyone with political clout actually cared about patent law it’d not resemble what it does today.

  26. “Sure, the patent examiner is in favor of cutting the military budget.”

    I didn’t say we needed to “cut the military budget”. I do say that we need to lessen the need for such a bloated military budget (which it plainly is) and then be permitted to adjust it appropriately. Heck, who knows, maybe we could spare a paltry 1 billion (or whatever that number is, I forget off hand) to, oh, idk, feed all our school kids? Take decent care of homeless folks?

    Canadialand v the US? lulz.

    “Boundy and the Katz man be two of the most diligent at providing substance to the discussion, and backing upz what they say (as opposed to the rest of us lazy ones that post on mere message boards O patent blogs – anonymously no less).”

    Boundy and Katz, try as they might, will probably never overcome their being a douchebag, or a tool. Therefore, whatever they try to do will be hampered. Diligence will never make up for being a douche and a tool. In fact, it contributes to it. Indeed, that any effort they might be making to undouchify themselves is being hampered shows from their constant qq about appeals etc. etc., which I’m sure they avail themselves of constantly due to their own ineptitude at prosecuting.

    Btw pingerdoodle, since you haven’t figured it out yet, backing up what you say with nonsense doesn’t really help your position. Nor does it help Kat or Boundy.

  27. “His spreading sensationalist lies and disinformation to besmirch my own profession didn’t pop into your mind?”

    What lies and disinformation has Boundy spread? All I’ve ever seen him discuss is the law, and how the USPTO loves to ignore it.

    It’s funny. You still can’t see what damage Dudas did, and what an atrocious director he was.

  28. YEA Team!

    Ya just bein jealous again Sunshine. The factz is Boundy and Katz put their real names and reps on the line and do what you only sit here and be otch about.

    Maybe ya should see if they would take up any of your windmill causes and make it real?

  29. ping Boundy and the Katz man be two of the most diligent at providing substance to the discussion, and backing upz what they say

    Awesome pom-poms. How did you manage to tan your nose and not the rest of your face?

  30. In my experience, pre-appeal briefs are a cheap and easy way to get a new shot at prosecution. The conference is the examiner, the signing primary (for junior examiners), and a QAS. Some of the QAS people are VERY reluctant to take an argument to the board unless it’s a slam dunk, and most will base their opinion on a half hour review of the case, which can make it pretty hard to convince them.

    Worst case scenario, you have to go through with an appeal. Best case, the examiner is forbidden to use the argument he’s been maintaining and has to start over with a new rejection or allow the case. The time limit for the conference, if I remember correctly, is two months after it’s added to the amended docket, which is not a huge prosecution delay. I honestly don’t see a downside for the applicant.

  31. spreading sensationalist lies and disinformation

    big time lulz at ya 6 – Boundy and the Katz man be two of the most diligent at providing substance to the discussion, and backing upz what they say (as opposed to the rest of us lazy ones that post on mere message boards O patent blogs – anonymously no less).

  32. Gee, I wonder how many billions the US could save if it did that?

    Sure, the patent examiner is in favor of cutting the military budget. We all know the Canadians won’t burn down the patent office when they invade. You’ll be sitting pretty. What about the rest of us?

  33. “We did not give them a choice. In the peace treaty after WW2, the US agreed to provide Japan’s National Defense, and Japan gave up the right to have a standing army. But I don’t think we could “try that” unless we found someone willing to foot the bill to protect us.”

    No, they had a choice, 40 years in or so. They just amended their constitution to make it so they don’t have the ability to declare war (unless in self defense?). Sure, they were dependent for awhile, but they’re not really any more. They have a rather large, modern army now, at least according to the wiki. They use it for peacekeeping and national defense only though. Gee, I wonder how many billions the US could save if it did that?

  34. “This is the first I’ve heard that it is a cultural thing about not opposing the government. ”

    Could be different for different companies. Or could be both for all companies. They could be a little embarassed about having such non-american beliefs about challenging the government when dealing with americans so they don’t bring it up often.

    Idk, that’s just what she told me.

  35. “Oh, 6, at first I wondered why in the world you had so much venom toward Boundy… then I remembered that you actually liked Dudas. Makes sense now.”

    His spreading sensationalist lies and disinformation to besmirch my own profession didn’t pop into your mind?

  36. lulz crowd,

    One Word to rule them all,
    One Word to find them,
    One Word to bring them all
    and in the darkness bind them.

    That Word be:

    A c c o u n t a b i l i t y

  37. I’ll tell you one reason that a person I know working at a firm told me. Apparently all of that firm’s foreign clients do not believe in fighting the government, which they view appeals as being a form of. They believe in working with the government. That’s nearly verbatim what she said, and boy she’s mad as a hornet because she’s a fighter all the way but they will never appeal. I believe she metioned seperately that most of those clients were Japanese.

    I can confirm that I have had the same experieince prosecuting US applications for Japanese clients. They just seem to have a flat rule against appealing. But it was explained to me that it was because they do these qualitative analysis studies, and that the results of those studies showed that appealing is not the best course of action. This is the first I’ve heard that it is a cultural thing about not opposing the government.

    By and large, it seems large clients mostly have one of three policies. The first policy is to never appeal. The second policy is to always appeal. The third policy is to give the patent attorney carte blanche.

    An interesting piece of trivia you guys might not know about, Japan actually formally gave up war, in total, a long time ago. Seems like an interesting way to run a country. Maybe we could try it.

    We did not give them a choice. In the peace treaty after WW2, the US agreed to provide Japan’s National Defense, and Japan gave up the right to have a standing army. But I don’t think we could “try that” unless we found someone willing to foot the bill to protect us.

  38. ” It seems to be the only time in the process that supervisors actually review the gibberish produced by examiners.”

    Lulz. That’s probably true. But they’ve probably signed off on the gibberish 2, 3, 4, etc. times without bothering to read it.

    “After seeing the gibberish 10 or 15 times, a supervisor must be motivated to take corrective action.”

    You would think seeing his/her own signature on the gibberish just once would be motivation enough.

  39. “The Board will slap the examiner and remand to that same examiner to… re-open.”

    No. The Board will reverse. And if the examiner wants to re-open after a reversal, the examiner will need the approval of the TC Director. Unfortunately, some of these TC Directors sign off on that the same way SPE’s sign off on junior examiner OA’s that reject every claim, with a stroke of the pen that is faster than the speed of light. Mr. Kappos needs to remind all of the TC Directors what the standard for re-opening after reversal is, and then he should have any TC Director who wants to approve re-opening after reversal come personally to his office and explain why it’s necessary.

    Getting it now.

  40. “but the overall impact is going to be… what?”

    The impact will be: the TC Director’s will see the same chuckle head SPE’s and other do nothing quality assurance types coming to them wanting to re-open with flim flam excuses that will be clearly shot down by the appellant. Eventually these chuckle heads will figure that it’s better to do the job correctly the first time than have to walk into the TC Director’s office and hear, “You again?!”

    I’m probably putting way too much faith in the TC Director’s, but we gotta start somewhere.

  41. then re-opening should be denied and the case should proceed to the Board.

    Iza gets the desire here – but the overall impact is going to be… what? The same? The Board will slap the examiner and remand to that same examiner to… re-open.

    I have ways to get compliance.

    HMS Boundy,

    No doubt these ways will raise the ire of the 6-ster. btw, your sensitivity to actually treating 6′s comments as anything but a joke, while all nice warm and fuzzy, is indicative of an error that only a newbie to these boards makes. The underwear on his head is a giveaway.

  42. My record with Pre-Appeal Conferences is somewhat better that the statistics presented and I find them very useful.

    Moreover, while the value in an individual case is high, I think if we all took advantage of the program, it would go a long way to improving the office. It seems to be the only time in the process that supervisors actually review the gibberish produced by examiners. After seeing the gibberish 10 or 15 times, a supervisor must be motivated to take corrective action.

    This can’t help but produce better quality examinations.

  43. Newby | Nov 17, 2010 at 09:33 AM -

    PTO policy shmolocy. The statute is the statute, the CFR regulations are the regulations. If the plain language of either goes your way, the PTO has no authority whatsoever to give you less.

    However, the PTO does have Chevron deference to interpret statutes and regulations (closely analogous to “broadest reasonable interpretation” of claims) — if the PTO’s interpretation is reasonable and if PTO followed procedure in promulgating and consistently following that interpretation, then the statute or rule means what the PTO says it means, and you have very little leverage to disagree. There are several major limitations on Chevron — the PTO can’t make up interpretations and policies on the fly, and they have to follow certain procedures, which they never do — but unless the statute/rule clearly goes your way, you have a tough row to hoe.

    I don’t have time to look up the statute and reg right now and I don’t know your facts, I will leave that as an exercise for the reader. But if you’re getting screwed, let’s fix it. One of the first things Kappos did when he came in was fix another “PTO policy” that was in breach of the statute, and he’s open to that kind of thing. For the first time in a long time, the PTO is headed by three lawyers (Kappos, Barner, Stoll) who care about following the law. They are having a dickens of a time convincing the rest of the PTO that following the law matters (see my first post in this article), but they want to get their ship headed the right direction.

    Observation. Most of the time that I get “it’s PTO policy” from a lower-level PTO employee and it doesn’t square with what I find in written guidance, I go up the chain and find out that it isn’t PTO policy at all, it’s baloney that the examiner made up on the spot. Don’t take examiners’ statements of “PTO policy” at face value. I don’t have enough experience with ombudsmen to know whether they’re any better.

    Second observation. There’s a big section on administrative law and Chevron deference in my book that will be out in a few months, check out “Boundy Patent Prosecution” at Amazon.

  44. j at Nov 17, 2010 at 09:05 AM -

    If you’re letting examiners get away with “has to assert one skilled couldn’t make and use the invention” you’re shortchanging your client. Worse, you’re teaching the examiner that short cutting and ignoring instructions in the MPEP is OK and is the sfastest path to that disposal count, and that hurts everyone.

    Read MPEP § 2164 and following, especially § 2164.04 “Burden on the Examiner.” Make the examiner do his/her job. If the examiner wants to “just assert one skilled couldn’t make and use the invention” instead of making the findings required by § 2164.04, call the ombudsman. (If the examienr sets out the findings and you disagree with them, appeal — but if the examiner stands silent on necessary prima facie elements, call the ombudsman.) If the ombudsman doesn’t want to make the examiner do his/her job, or either balks at the idea that the MPEP means what it says when specifying minima for examiner conduct, call me — I have ways to get compliance.

  45. Hi Dennis. I have to disagree w/ Maebius’s contention that reopening prosecution could result in longer patent term extensions. We have had a couple cases granted off of pre-appeal briefs. In each case, the time that the pre-appeal brief was pending was counted as applicant delay. We contacted the ombudsman, who informed us that this is PTO policy. That seems to contradict the spirit of the pre-appeal conference, if not 35 USC 154(b)(1)(C). Not sure what they’re doing with cases that simply reopen prosecution, but I wouldn’t be surprised if it operates in the same way. Has anyone had any experience with that?

  46. I thought the pre-appeal brief program required you show the Examiner has not made a prima facie case

    j,

    from the 2005 OG notice link to uspto.gov
    “If the applicant feels the rejections of record are clearly not proper and are without basis, then filing this request may result in a panel decision that eliminates the need to file an appeal brief. This should be based upon a clear legal or factual deficiency in the rejections rather than an interpretation of the claims or prior art teachings.” (emphasis added)

  47. “Sometimes I’m sure the applicant presented his views better or changed his argument.”

    I hear this nonsense a lot from examiners. If th pre-appeal or appeal brief contains new arguments, then the examiner should be able to go to the TC Director and identify those new/changed arguments and get permission to re-open. And it should be done in writing. And appellant should be given an opportunity to respond. If the examiner’s reasons for wanting to re-open are bogus (i.e. he/she is finally being called out on a bs rejection), then re-opening should be denied and the case should proceed to the Board.

    “Dennis, just out of curiosity, are the recent contributions from pseudonymous commenters…coming from a single source?”

    What’s it to you, sockie?

  48. I thiought the pre-aapeal brief program required you show the Examiner has not made a prima facie case, in which case they are too restrictive in scope and generally not so useful. The issue is not normally prima facie but something else. e.g. not making a prima facie 112 enablement rejection is virtually impossible, the Examiner just has to assert one skilled couldn’t make and use the invention.

  49. I have gotten several PABC prosecution re-openings on 102.. never on 103. That is the statistic that needs researching.

    It is pretty clear when a PABC request is the way to go… when you have a 102 where the Examiner is plain ignoring the limitations.

    That is, where the rejection is so bad.. the other two “senior” Examiners can’t sign off on it with a straight face.

    Otherwise, your Client’s money is far better spent on the actual appeal brief.

  50. Oh, 6, at first I wondered why in the world you had so much venom toward Boundy… then I remembered that you actually liked Dudas. Makes sense now.

  51. “I didn’t say that they didn’t. I said they cut off your hands if you do.”

    I think they cut off your hands as you enter the door there.

    “Lulz. I’ve not seen any cases that had something like that in my art.”

    I have seen some incredibly, laugh out loud outlandish rejections in even the mechanical arts for a client I have that insists on filing in Japan for some reason.

  52. “They let you amend in Japan. They also let you appeal”

    I didn’t say that they didn’t. I said they cut off your hands if you do.

    ” An 8 way rejection including references directed to a cheese grater, combustion turbine, cell phone, laptop, and washing machine? Perfectly reasonable under Japanese patent law, and your claims are obvious.

    Lulz. I’ve not seen any cases that had something like that in my art.

  53. An exception I have found, 7, is to use the PPH procedure in Japan. If you have indicated allowed claims in the U.S. at the time you request examination, conform the Japanese claims and request PPH. You’ll have a granted patent in about two weeks.

  54. Boundy, I’m disappointed that you rose to the bait.

    Actually, I’m also concurrently incredulous, fascinated, mortified, and thankful.

    To err is human.

  55. “Little wonder they don’t appeal. In Japan they cut your hands off if you even amend, much less appeal.

    I may have made that last part up, but maybe not.”

    They let you amend in Japan. They also let you appeal. What they don’t do is allow any claims of an American applicant, pretty much ever. An 8 way rejection including references directed to a cheese grater, combustion turbine, cell phone, laptop, and washing machine? Perfectly reasonable under Japanese patent law, and your claims are obvious.

    I honestly don’t know why any non-Japanese company would ever file in Japan. Spend your money at the USPTO and EPO, where you can actually get a patent. Or the Canadian Patent Office if you have competitors there.

    I would love to see how it works at the JPO for a Japanese applicant. I bet it’s a 1st action allowance every time, and probably a thank you bento box of sushi for the inventor.

  56. Dennis, just out of curiosity, are the recent contributions from pseudonymous commenters like…

    Bring the chuckles big time clown.

    Wasn’t too long ago (in dog years) when NAL nailed you for exactly that type of postin.

    Now ya wanna be otch about it. Kinda tough to wah wah to Dennis cause it aint someone callin ya a bafoon, yet you delight in that very same behaviour.

    Which of the four typical Malcolm posts did that fall under? Was it option D?

    other non-sequitur and/or uninformative comments?

    Heck, even I can give that answer – it be Malcolm.

    By and large, many comments recently have degraded into juvenile, sometimes profane or vile, messages that do not add value, but rather, engage in name-calling and belittling of others.

    Yep, that be Malcolm obvious response “D”.

  57. “Why would company B only appeal 2% of the time even though 70% of their pending cases have 4 or more rejections? Some cases have even had 10 rejections and still not even one notice of appeal, much less the filing of an appeal brief.

    I’ll tell you one reason that a person I know working at a firm told me. Apparently all of that firm’s foreign clients do not believe in fighting the government, which they view appeals as being a form of. They believe in working with the government. That’s nearly verbatim what she said, and boy she’s mad as a hornet because she’s a fighter all the way but they will never appeal. I believe she metioned seperately that most of those clients were Japanese.

    Little wonder they don’t appeal. In Japan they cut your hands off if you even amend, much less appeal.

    I may have made that last part up, but maybe not.

    But you’re right Mark some appeal all the time, some never do. I would guess though that there probably are “average applicants”.

    An interesting piece of trivia you guys might not know about, Japan actually formally gave up war, in total, a long time ago. Seems like an interesting way to run a country. Maybe we could try it.

  58. I’ve noticed that some major applicants appeal as a matter of course, and some major applicants never appeal. By “major applicant”, I’m referring to companies that have filed over a hundred applications in the past five years.

    Consider two different companies, A and B, filing applications in the same art unit. Why would company A appeal 60% of their applications even though they are losing 75% of the time at the BPAI.

    Why would company B only appeal 2% of the time even though 70% of their pending cases have 4 or more rejections? Some cases have even had 10 rejections and still not even one notice of appeal, much less the filing of an appeal brief.

    It seems to me that any discussion of the statistics of appeals needs to take into account that there are very large differences between the appeals practices between different major applicants. There may be no such thing as an “average” applicant with an “average” appeal rate.

  59. Comments are helpful and informative when they provide a counter-point or an amplification. By and large, many comments recently have degraded into juvenile, sometimes profane or vile, messages that do not add value, but rather, engage in name-calling and belittling of others. One of the problems with this result is that in order to read the insightful, informative comments, we must wade through the volumes of juvenile, vile, comments. I would kindly request that before you comment, give consideration to whether your comment is truly adding insight and whether it is stated diplomatically and with respect. If not, please reconsider posting.

  60. “air jordan”

    I think that was spam that got through.

    “And in about 25% of the cases in which the brief is filed in response to the panel decision, they re-open.

    The PTO probably doesn’t keep stats on that. That situation is supposed to be “rare.”

    Lulz and lulz some more.

    Sometimes I’m sure the applicant presented his views better or changed his argument. Combine the rare reopening when nothing changes from pre-appeal brief to appeal brief with the reopenings in response to newly raised/formulated arguments and I wouldn’t doubt if you hit 25%. Sounds about right actually.

    “Is there any concern that the pre-appeal conference has contributed to the growth in the appeal rate over the last few years? In other words, is it possible more Applicants appeal because the initial cost is lower, and the cost of preparing the brief avoided in many cases, thereby both delaying the expenditure and decreasing the average cost of appeal?”

    That is something that should definitely be addressed broje. Great job thinking it up. It was right around the time when it was implemented that we saw the explosion, then the explosion hit in full force after KSR.

  61. “Not exactly. The pre-appeal brief conference will forward a case to the BPAI if “there is at least one actual issue for appeal.” ”

    And if the examiner didn’t want to otherwise reopen for something else.

  62. Dennis Crouch said, “the pre-appeal brief conference program does not seem to actually reduce patent examiner workload. However, it does help speed prosecution and allows a substantial number of applicants to avoid filing the formal appeal brief.”

    Is there any concern that the pre-appeal conference has contributed to the growth in the appeal rate over the last few years? In other words, is it possible more Applicants appeal because the initial cost is lower, and the cost of preparing the brief avoided in many cases, thereby both delaying the expenditure and decreasing the average cost of appeal?

  63. Dennis, just out of curiosity, are the recent contributions from pseudonymous commenters like “keep the lulz” coming from a single source? Is it the same source as “elmer” and “air jordan” and the other non-sequitur and/or uninformative comments?

    Just curious.

  64. “56% of the pre-appeal brief conferences resulted in a decision by the conference members that the examiner’s rejection was proper and that the case should proceed to the BPAI.”

    And in about 25% of the cases in which the brief is filed in response to the panel decision, they re-open.

    The PTO probably doesn’t keep stats on that. That situation is supposed to be “rare.”

    Lulz and lulz some more.

  65. 56% of the pre-appeal brief conferences resulted in a decision by the conference members that the examiner’s rejection was proper and that the case should proceed to the BPAI.

    Not exactly. The pre-appeal brief conference will forward a case to the BPAI if “there is at least one actual issue for appeal.”

  66. “The law is too complicated for your avg examiner, and probably for a small portion of spes at least sometimes.”

    We have a winner in the “understatement of the century” category.

    Lulz

  67. Can we agree to ignore 6? There’s nothing there that’s worth the electrons. I take responsibility for being the first one to respond, my error.

  68. “6 and those who cannot read the FR Notice do not recognize that it provides no information on the number of Appeal Briefs filed. Public comments had urged the PTO to publically disclose and acknowledge the number and fate of all Appeal Briefs filed and the resulting Appeal Brief conferences. The Notice conveniently takes the substance of these comments out of context by choosing to discuss something else, which has a confusingly similar terminology. Instead, the Notice discusses the result of a “Pre-Appeal Brief” program that PTO instituted in 2005 (See “New Pre-Appeal Brief Conference Program”, 1296 Off. Gaz. Pat. Office 67 (July 12, 2005) but not the results of Appeal Conferences, of which there are more than 25,000 per year.”

    So what you’re saying is that you beg my pardon while you douche it up some more?

    Sigh. Idk man. I can excuse quite a bit, but come on. There’s got to be a line drawn somewhere.

    “Apparently, the PTO is not keen on publically discussing these statistics. ”

    As I understand it, they were preparing them last I heard. It takes time to not f them up. You should know.

    “jump to final conclusions after failing to comprehend the written material and the facts”

    What conclusion have I inappropriately “jumped” to? That you are a tool? Or that you are a douche?

    “Pre-Appeal filings are a red herring and any discussion of this program clouds the issue.”

    Which is…?

    Let’s be clear here Kat and Dave. Appeals are filed. We all get it. The law is too complicated for your avg examiner, and probably for a small portion of spes at least sometimes. The law gets more complicated day by day and we’re in a time of astounding changes in the law. Examiners don’t keep up with it. Appeals have risen. What, precisely, is your issue? That some examiners don’t do a good job? Sorry. So sorry. Maybe we should just hire you. Who knows? Maybe we’ll all be in for a lol when your appeal rate is the same as everyone else’s.

    Besides, I’ve got news for you, lots of prosectors don’t do a good job either. Just this past month I’ve had 3 cases where the attorney didn’t see a simple alternate designation of parts in the reference that killed their last claim that applies to their newly amended claim. And they sheepishly straight up admit that they didn’t even see it. It’s right there in front of their face. Not even particularly difficult designations either. There is a problem when they can’t even draft around the ONE O TWO art right in front of their face. Keep in mind that these are people with very nice rejections in front of them using very good art. And even in those perfect conditions 3 out of, lets say 10, fed it up.

    Bottom line, dealing with patents is difficult, stop ur btching. Not to mention that the old “final decision” model is hopelessly outdated and just another relic from a bygone era.

    I also note that it would be funny to see if the director gets an appeal in that case he examined awhile back. It’ll be hilarious if he loses.

  69. You don’t tug on Superman’s cape
    You don’t spit into the wind
    You don’t pull the mask off the old Lone Ranger

    unless, O course, ya be a Dufass like 6.

  70. “You know who led the effort that got the 2008 Appeal Rule canned? And the IDS rule? And a couple more that were canned before they were published? And that successfully got the White House to can the Continuations and Claims rules in January 2008 several months before the court did? And who figured out the way to handle the mootness issue in Tafas that led to reinstatement of Judge Cacheris’ decision? I’m comfortable with my win-loss record.

    Just to make something clear, I’m very happy with the overall direction of this package. For example, you might want to compare the overall notice (e.g., the two full pages of discussion of “new ground of rejection,” and the withdrawal of Ex parte Ghuman cancellation) to my two comment letters. Overall, I am very happy with this notice.

    The schooling I provided has been quite successful in influencing the contents of the rule. The next step is to school the PTO in the procedural law.

    You could have just typed “You’re right 6, I’m a contender for the biggest tool and douche on PO”. You didn’t have to lay all the facts down for everyone to see.

    “You know who led the effort that got the 2008 Appeal Rule canned?”

    The President of the United States? I believe it was Gee Dubbaya at the time.

    Doesn’t matter what you take credit for, you’re still a tool, and you’re still a douche.

    “And who figured out the way to handle the mootness issue in Tafas that led to reinstatement of Judge Cacheris’ decision? ”

    Who “figured it out”? Lulz.

    “I’m comfortable with my win-loss record.”

    That’s because you’re a douche and a tool. As I’ve been saying. If you weren’t you’d probably understand why I’m saying that.

    “e.g., the two full pages of discussion of “new ground of rejection,”"

    Which was exactly what everyone already understood it to be. Good thing its in black and white now, that did a whole lot.

    Douche.

    Tool.

    Look them up.

    Btw, I think you can get an “Excel for Dummies” at your local barnes and noble. Maybe you won’t fail at stats next time.

  71. 6 and those who cannot read the FR Notice do not recognize that it provides no information on the number of Appeal Briefs filed. Public comments had urged the PTO to publically disclose and acknowledge the number and fate of all Appeal Briefs filed and the resulting Appeal Brief conferences. The Notice conveniently takes the substance of these comments out of context by choosing to discuss something else, which has a confusingly similar terminology. Instead, the Notice discusses the result of a “Pre-Appeal Brief” program that PTO instituted in 2005 (See “New Pre-Appeal Brief Conference Program”, 1296 Off. Gaz. Pat. Office 67 (July 12, 2005) but not the results of Appeal Conferences, of which there are more than 25,000 per year.

    Pre-Appeal filings are not Appeal Brief filings. The Notice is selective in the information it provides and fails the “Objectivity” prong of the Information Quality Act. Pre-Appeal Briefs are much less burdensome to prepare. On the other hand, in FY 09 there were more than 25,000 fully burdened Appeal Briefs filed. I could not find this information in the Notice. Apparently, the PTO is not keen on publically discussing these statistics. Furthermore, the second table in the Notice only shows the effects of appeals that reach the BPAI – not the fate of more than 25,000 Appeal Briefs per year that are filed. See a discussion of these numbers in connection with Figure 3 of my article at link to bit.ly. That said, the Notice definitely exhibits a substantial positive change of attitude at the PTO and for the first time moves in the right direction to address the appeal backlog. The team responsible for this at PTO should be commended for this important step.

    So 6, please stop doing here what you or some of your colleagues do when examining applications – jump to final conclusions after failing to comprehend the written material and the facts.

    Pre-Appeal filings are a red herring and any discussion of this program clouds the issue. The mere fact that the Office instituted this procedure in 2005 is a mark of its examination process failure. If examination were proper and final, the Office would not have had to build another error-correction layer before an appeal brief is filed.

  72. 6 –

    You know who led the effort that got the 2008 Appeal Rule canned? And the IDS rule? And a couple more that were canned before they were published? And that successfully got the White House to can the Continuations and Claims rules in January 2008 several months before the court did? And who figured out the way to handle the mootness issue in Tafas that led to reinstatement of Judge Cacheris’ decision? I’m comfortable with my win-loss record.

    Just to make something clear, I’m very happy with the overall direction of this package. For example, you might want to compare the overall notice (e.g., the two full pages of discussion of “new ground of rejection,” and the withdrawal of Ex parte Ghuman cancellation) to my two comment letters. Overall, I am very happy with this notice.

    The schooling I provided has been quite successful in influencing the contents of the rule. The next step is to school the PTO in the procedural law.

  73. “6 – did ya see that news article abouts the Feds investigatin the purposeful destruction of certain petition and “quality” documents in the PTO? Perhaps your penchant at word play is at work with the word “transperancy” – as in “can’t see this – nah nah nah”.”

    Lulz, like anyone cares. Let’s see a link for more lulz though.

  74. following basic patent law (see, e.g., Beauregard claims)

    Oh lookie – another windmill.

    HMS – don’t sweat the 6, the only way he gets by his logic problems if he (like the Office) hides the work and details and just proclaims the answer. Come ta think of it, sorta like Sunshine Malcolm.

    6 – did ya see that news article abouts the Feds investigatin the purposeful destruction of certain petition and “quality” documents in the PTO? Perhaps your penchant at word play is at work with the word “transperancy” – as in “can’t see this – nah nah nah”.

  75. “Ron Katznelson ”

    Is a tool and a douche, you just didn’t believe me the first time I told you.

    O wait, its you Dave. Probably the only one on here to rival Mr. Katznelson in both of those arenas.

    “Since the PTO disclosed none of its data, sources, or analytical methods, I can’t analyze the PTO’s statistics to see whether there’s some legitimate basis for the difference. And that’s the problem.”

    Lulz, except that they know 100% what the stats are and you and Katz on the other hand do not, and have pieced together nonsense. In that instance there is no problem except the aforementioned aspects of you and Mr. Katznelson.

    “What I can conclude with certainty is that PTO’s failure to disclose violates the Information Quality Act, which requires “reproducibility” and “transparency” for information disseminated in rule making notices.”

    Lulz, keep up the douchebaggery sir.

    “I can also conclude that no part of patent operation–not even the Board–gives a rat’s ass for following rule making procedural law. ”

    Maybe they just don’t know it, maybe they should ask someone so esteemed as yourself who can tell them all about it.

    “The Notice has plain violations of the Administrative Procedure Act, the Paperwork Reduction Act, and who knows what else I’ll find with more review. The PTO’s notice squarely tells Judge Cacheris to go fly a kite–not a smart move when there are only a few judges in EDVa.”

    It also has a big ol’ “YOU WERE WRONG LULZ” stamped right across its front. And you’re not happy lolololol.

    “Judge Cacheris to go fly a kite”

    Flying kites is fun.

    “Director Kappos still has some work to do.”

    I kno right? He’s still got a few things to school you in.

  76. I can also conclude that no part of patent operation–not even the Board–gives a rat’s ass for following rule making procedural law.

    They also don’t care about following basic patent law (see, e.g., Beauregard claims), so no surprises here.

  77. I have real questions about these statistics.

    Ron Katznelson pulled together the data that PTO released in the Tafas production and by FOIA request in 2007-08, and graphed it at

    link to works.bepress.com slide 15

    showing a that about 80% of appeals succeeded at Pre-Appeal and Appeal Brief phase in FY 2007. Ron’s statistics are very similar to the ones I had pulled together in earlier years by FOIA request, that are in my materials in PLI’s annual Advanced Patent Prosecution book.

    Ron disclosed all his sources, as you can see in the legend to the graph.

    Since the PTO disclosed none of its data, sources, or analytical methods, I can’t analyze the PTO’s statistics to see whether there’s some legitimate basis for the difference. And that’s the problem.

    What I can conclude with certainty is that PTO’s failure to disclose violates the Information Quality Act, which requires “reproducibility” and “transparency” for information disseminated in rule making notices. I can also conclude that no part of patent operation–not even the Board–gives a rat’s ass for following rule making procedural law. The Notice has plain violations of the Administrative Procedure Act, the Paperwork Reduction Act, and who knows what else I’ll find with more review. The PTO’s notice squarely tells Judge Cacheris to go fly a kite–not a smart move when there are only a few judges in EDVa.

    Director Kappos still has some work to do.

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