Fast-track Appeals

The USPTO has started its appeal fast-track program — “Fast-Track Appeals Pilot Program.”  The program includes a $400 cut-in-line progrea launches July 2, 2020. The required petition fee for cutting-in-line is $400. There are already a group of cases that are treated “special” for appeals, including reissues, reexaminations, and cases “made special.”  But, the USPTO Examination Track-1 cases are not currently treated as special on appeal.

The Patent Act provides a right to appeal to the PTAB once your claims have “been twice rejected” and you have “paid the fee.” 35 U.S.C. 134(a).  The fee structure is a bit unusual.  It costs $800 to file a notice-of-appeal at which point briefing begins.  Quite often examiners withdraw their rejections after seeing the patent applicant’s brief.  Once the briefing is complete the case is ready to be “forwarded” to the Board — which requires $2,240. [Current Fees]  There is also a $1300 fee if you want an oral hearing rather than having the PTAB decide your case on the briefs.

This is a good move from the PTO. A modest fee for a modest timing improvement.  The current pilot is limited to 125 per quarter for the next year. 500 total before a reevaluation.

Modest timing improvement.  The petition can be filed only after the case has been forwarded to the PTAB and the applicant has received an appeal docket number.  From that point, the current PTO timeline is about 14-15 months for an ex parte appeal.  The office is expecting that an expedited appeal will take about 6 months.

Note here that most cases are already pretty old by the time they get to an appeal. Folks have gone through a non-final rejection and a final rejection, and typically also one round of an RCE (request for continued examination) to attempt to resolve issues with the examiner. Most appealed cases are also not “original” application filings in that most claim priority to one or more earlier filed applications (US non-provisional; US provisional; PCT international application; or foreign application filing).

After the final rejection, a patent applicant has a six-month deadline for filing a notice of appeal (NOA) followed by an appeal brief within two-months of the NOA. The examiner then has two months to file a responsive brief (answer). And, that may be followed by a reply brief.  The fast-track will not impact these timelines.

Federal Register Notice: https://www.federalregister.gov/documents/2020/07/02/2020-14244/fast-track-appeals-pilot-program

USPTO Announcement: https://www.uspto.gov/about-us/news-updates/uspto-announces-fast-track-appeals-pilot-program

 

128 thoughts on “Fast-track Appeals

  1. 8

    People are bragging about making Examiners withdraw when they wouldn’t have appealed unless the numbers showed the Examiner was already likely to withdraw.
    You beat the worse players 90% of the time? Congrats! You are average!

    How many appeals withdrawn after receiving an Examiner Answer? 75-80% IME

    1. 8.1

      I have seen zero withdrawal of appeals after an examiner’s answer.

      I cannot speak for AAA JJ, who has provided his numbers, but I would hazard a guess that your sense of “IME” was pulled directly out of your arse.

      1. 8.1.1

        Your conclusion re the factual source of publicly cited statistics seems to be distressingly and unprofessionally true these days, perhaps due to the leadership of POTUS? Simple logic would question why 70%-80% clients that had already paid all the attorney and PTO appeals fees would withdraw their appeal after getting an examiners answer?
        The rare times I ever did so was to file a continuation with re-written claims after inheriting a clearly unpersuasive appeal brief written by another attorney, but only after the continuation filing was confirmed.

        1. 8.1.1.1

          perhaps due to the leadership of POTUS?

          I am certain that POTUS contributes to the distress and lack of professionalism.

          I am also certain that POTUS is not any type of cause of the distress and lack of professionalism, as such is very much evident across the spectrum (and deeply on the Far Left that very much oppose POTUS). So soon do you forget Malcolm? He was the epitome of POTUS on these boards before his departure this past spring, just after celebrating his fifteen year mark.

    2. 8.2

      In 21+ years of practice I have never looked at an examiner’s “stats” when deciding to appeal. The decision is on the merits. Every single time.

      In 21+ years of practice I have never withdrawn an appeal after an examiner’s answer.

      IME

  2. 7

    Scott’s “Post-Grants” blog today provides a detailed explanation of why “New Pilot May Not Accelerate Post-Grant Matters”

  3. 6

    I’ve appealed 52 applications in the past 7 years. 23 (44%) were re-opened and eventually allowed by the examiner.

    1. 6.1

      Thanks AAA. I have not dug into the statistics on this for a few years.

    2. 6.2

      44 per cent? So you are persuasive less than half the time? I know people like that.

      1. 6.2.1

        … and I know people who have a zero percent persuasive value at a greater than 95% single person focus factor.

        Beep beep.

    3. 6.3

      Of those that went on to appeal, how many reversed the examiner on at least one rejection? 44% seems to me like maybe they should have been allowed, and the examiners knew it. You called their bluff.

      1. 6.3.1

        Of the remaining 29, 19 were completely reversed, 6 were affirmed, and 4 are still pending.

        1. 6.3.1.1

          So, if my math is correct, of the 48 that have been concluded, the examiner ‘was smacked’ (either changed his mind or was told to change his mind) 87.5% of the time…

          1. 6.3.1.1.1

            Even ignoring the ones that were ultimately allowed after reopening (which may mean additional amendments were employed to reach patentability), 19 reversals over 25 completed appeals is a 76% WRONG rate for the examiners.

            What art, may I ask?

            1. 6.3.1.1.1.1

              good question – But I still posit that it is the higher 87.5% that is the WRONG rate for the examiner (since that is the number of both being told flat out that the examiner is wrong combined with the examiner realizing that they were wrong and reopening on their own before being so told.

              AAA JJ, do you have an answer that you would share?

              1. 6.3.1.1.1.1.1

                The 52 cases are from every TC except 1600 and designs.

                1. Ah yes, my mindless ad hominem laden friend with the shifting historical pseudonym penchant, did you have a point that you actually wanted to put forth?

                  Do YOU really believe that a person being congratulated for a particular point MUST be elevated to have everything that they have ever said to be likewise considered ‘sacrosanct?’

                  Did you always have this issue of not being able to apply critical thinking on an issue by issue basis?

                  You tell me to be careful (with an insult that fits yourself vis a vis “Snowflake”) while yet another anvil lands on your head.

                  Beep Beep.

                2. Ding Ding Ding!!! “anvil” !!!!

                  Snowflake has Yet Another New Tell !!!

                  Will he go for the Trifecta?? Or fall back on one of the old ones???

                3. Do you realize your own “tells,” my friend with the shifting historical pseudonym?

                  Or is it memes when you use them? Are you suffering from selective misapplication of terms (gasp, another meme of yours)?

                  Is that another ACME box for the Wile E. Coyote train wreck?

                4. ? What have you added with this comment?

                  It’s like you are eager for that anvil landing on your noggin.

                5. Your meme/tell/whatever of “trifecta” is meaningless.

                  That you want to crow about doing something meaningless is rather ‘anvil on the noggin.’

                  Beep beep.

                6. What is “Ding Ding Ding”…?

                  Is that a tell or a meme?
                  Does it matter?
                  Does anything that you post matter?

                  Or are your postings simply reflective of your inconsequential life?

                7. Still not responsive (not sure why you would want to check your watch — are you timing something?)

    4. 6.4

      But how many will pass PTAB after issuance?

  4. 5

    I have one quibble with your post.

    You have implied that a continuation application is not an “original” application (“Most appealed cases are also not “original” application filings in that most claim priority to one or more earlier filed applications”). This is incorrect. An original application is any application other than a reissue application. See MPEP 201.02 (“‘Original’ application is used in the patent statutes and rules to refer to an application which is not a reissue application”).

    1. 5.1

      Thanks. Point taken.

      I did explain my meaning of the term in the post in an attempt to avoid confusion. But I should probably used a different term in the future.

      1. 5.1.1

        The fault lies more with the MPEP. It is odd that it has defined “Original Application” to mean not only the original application, but also any continuation of the original application.

  5. 4

    Looking in from Europe, my eye is drawn to the sentence: Quite often examiners withdraw their rejections after seeing the patent applicant’s brief.

    I follow the mantra that “There are no dumb questions”. Given that an Applicant will not be appealing until after failure of sustained efforts to convince the Examiner, using other channels, what is it in the Appeal Brief, the magic ingredient, that succeeds in turning the Examiner around so often? Could it be that somebody else inside the PTO, other than the Examiner, has the job of assessing the Brief?

    1. 4.1

      A couple years back the USPTO instituted a pre-appeal conference review.

      The first two dozen of such uses provided the examiner rethinking their position at a rate of 100%.

      That being said, a few years in, and that percentage started slipping.

      In the larger scheme of things, it very much depends on the ‘higher authority’ within distinct and separate art units (this also should not surprise anyone that has been paying attention).

      1. 4.1.1

        That’s (for me at least) a very informative and revealing answer. Thank you.

        The question often asked by a client caught up in inter Partes proceedings: is there any point in appealing this adverse decision? The answer varies with the jurisdiction, it seems to me. In the courts of England it has always been that about 3 in every 10 disappointed parties appeal. At the EPO, I would say, it is more like 9 out of 10.

        But over here, thank goodness, it makes no difference to the assessment, which art unit the case is in.

        1. 4.1.1.1

          If you had been paying attention, the US Sovereign has been torn apart along Art Unit lines precisely because of the Supreme Court and their scrivining from the bench.

        2. 4.1.1.2

          … and make no mistake, your own obfuscations between other Sovereign’s view of “technical” and the different US Sovereign choice of Useful Arts reflects the difficulties that I comment upon.

          In other words, you are very much part of the problem.

          1. 4.1.1.2.1

            The “problem” is to deliver justice without the obligation to take every case to the highest level of appeal. At the PTO, early and high quality interlocutory review of the appeal brief can mitigate that problem.

            But of course, you are right, what is most needed is optimal statutory language, together with interpretation from the Supreme Court and Fed Ct that is formulated as clearly and precisely as the Statute allows.

            1. 4.1.1.2.1.1

              What is most needed is for the Supreme Court to NOT stick their fingers into the wax nose of patent law. It is their meddling that has cascaded to problems on an art unit basis in the patent office.

              1. 4.1.1.2.1.1.1

                Given the Statute, I’m not sure what other reasonable course was available to them.

                1. The actions of the Court are in disregard of the Statutes.

                  That you seem unable (or unwilling) to grasp this is very much part of the problem.

        3. 4.1.1.3

          Max, there is a surprisingly high rate of Fed. Cir. appeals of IPR decisions due to the fact that most IPRs are in response to infringement assertions hence real money riding on them. Even though the APA controls and the re-arguing of IPR factual decisions rarely succeeds. The relatively small number of successful IPR appeals are largely based on demonstrated IPR legal errors, especially due process violations, claim scope interpretations, and giving the wrong weight to, or ignoring, relevant evidence.
          Of course we now also have a clever argument, just now on Government-supported certs, and affecting many appeals, that the PTAB APJs were all unconstitutionally appointed.

    2. 4.2

      Max,the “magic ingredient” in some cases is that writing a good reply brief is a lot more work than an allowance or even finding and applying better references for a new rejection. Or it might be a new examiner who has never done a reply brief and is insecure about doing it?

      1. 4.2.1

        Or…

        It might be that the usual tactic of rubber-stamping a shoddy office action (in the likes of ‘just say no’) is going to go to a tribunal and an answer there of “you examiner did shtty work” will have a direct impact on that examiner’s paycheck (contrast with the typical shtty work being regarded as “high quality.”

        Since you have been out of prosecution for ages, I will put more weight in my rendition.

        1. 4.2.1.1

          I have been told by examiners that PTAB reversals are not counted against them in their performance ratings. Do you have information to the contrary that this has changed?

          1. 4.2.1.1.1

            Reversals by the PTAB are not “held against” examiners in their performance reviews/ratings.

        2. 4.2.1.2

          I stand corrected.

          So ‘officially,’ they are not “held against” the examiner. Still and all, losing such an appeal (on the record) opens the door for every other applicant with that examiner to blow a hole through the ‘examiner’s tricks’ that resulted in that lost appeal.

      2. 4.2.2

        This is not the most correct answer, but there is some truth to it. In almost every response I get there are amendments. And in the majority of cases, when there are amendments, the prosecutor’s comments are generic and perfunctory. Appeal briefs are rarely generic and perfunctory. So, for quite a few of my cases, the first time a prosecutor has tried to articulate a specific difference between the references and the claims is in the appeal brief.

        1. 4.2.2.1

          I have had many applications re-opened by simply cutting and pasting my arguments from the NFOA response or the FOA response into a pre-appeal or appeal brief.

        2. 4.2.2.2

          Thank you, Ben. Your:

          “……… for quite a few of my cases, the first time a prosecutor has tried to articulate a specific difference between the references and the claims is in the appeal brief.”

          explains why I as a prosecutor at the EPO routinely receive from US law firms instructions to reply to an Office Action that are worse than useless (because they lower their client even deeper down into the hole he’s in). These people seem to think that one can wait till the appeal process before one engages with the objections and explains how it is that they are not well-founded. At least as far as RoW is concerned, big mistake.

          1. 4.2.2.2.1

            Max, one reason for not making effective enough distinguishing arguments early enough is that some U.S. attorneys are very concerned about avoiding “prosecution history estoppel” that may effectively narrow claim scope in litigation of patent claims. [More than a little academic if they don’t get claims allowed.]

            1. 4.2.2.2.1.1

              Paul, you see it as I do, that the avoidance of file wrapper estoppal (FWE) is something of concern only after claims get to issue.

              The interesting thing for me, prosecuting cases at the EPO is the situation where a US instructing associate sets the importance of hypothetical estoppal in US litigation, on the basis of the file of the EPO patent family member, higher than getting a patent to issue in Europe.

              Seems a pity to me. But, hey, who am I to doubt the instructions I am given.

              1. 4.2.2.2.1.1.1

                It is beyond odd to say that “the avoidance of file wrapper estoppal (FWE) is something of concern only after claims get to issue.” because if you think it ‘only of concern’ AFTER the point of time with actually dealing with it, then you will never deal with it.

                Sure, one cannot cut off their nose to spite their face and do things that prevent obtaining a grant, but THAT is NOT what avoidance of file wrapper estoppal is about (and is advance by those who have lost — if they ever had — an understanding of prosecution.

              2. 4.2.2.2.1.1.2

                I don’t know the specifics of the EPO system, but I would be inclined towards adopting a system with extra eyes on every action. Preferably involving a random assignment of reviewers within art units. At the current PTO, examiners need not interact with each other much. And it is entirely possible to have one art unit with 5 examiners with a high threshold for 103 and 5 examiners with a low threshold for 103. If those 10 examiners were forced to acquire signatures from random examiners within their art unit for every action, their relative threholds would converge over time.

                We could have such a system if the stakeholders wanted it. But we don’t. Perhaps, if you system really does runs better, it’s because your stakeholders actually value quality rather than merely pay lipservice to it.

                1. The examining division at the EPO works very well. If you get a summons to oral proceedings you know all three examiners back the rejection. The one signing the OA’s is not just sending out nonsense hoping to generate RCE’s (which they don’t even have). The case is either allowed or your summoned to oral proceedings. (Of course you can make auxiliary requests in oral proceedings and the examiners really do consider the merits of the requests.)

                2. Ben, how we got there at the EPO is an accident of history, rather than the outcome of stakeholder bartering. Back in 1978, when the EPO got started, experienced national Patent Office Examiners from all over Europe began work at the EPO. Applicants were hesitant to choose the EPO (instead of national Patent Offices). So the EPO needed to offer higher consistency, greater legal certainty, in order to compete, and survive. Hence, 3-member Examining Divisions, the 3 members coming from three different EPC Member States.

                  There are other such accidents of history. For example why the EPO has search and exam as successive, separate, progress steps. In 1978, the EPO Search Dept was established at The Hague (a pre-existing search institute) whereas the Examiners were all in a brand new building in Munich.

              3. 4.2.2.2.1.1.3

                The interesting thing for me, prosecuting cases at the EPO is the situation where a US instructing associate sets the importance of hypothetical estoppal in US litigation, on the basis of the file of the EPO patent family member, higher than getting a patent to issue in Europe.

                Why is that so surprising, that the patentee should be more concerned about not damaging the value of the US asset than of bringing the EP asset to allowance? The US market is roughly equal in value to the whole EU market, but few patentees validate in the whole EU (the fees involved in such a validation scheme are cost prohibitive). Rather, most validate in only a subset (usually rather a small subset) of the EU jurisdictions. That means that the economic value of the market exclusivity obtained from a US patent is usually much greater than that obtained from the set of local (e.g., DE, FR, GB, etc) European patents obtained at the end of EPO prosecution.

                The US asset is simply more valuable than the European assets. No wonder, then, that economically rational market actors are willing simply to let the EU assets wither on the vine, rather than move them forward via means that could prejudice the value of the corresponding US asset.

                1. Well yes, Greg, I accept those points. Of course I have to, because the client knows best. It isn’t “surprising” to me and I didn’t say that it was. What I was driving at was a balance between the business reality today, of “no patent outside the USA”, with a mere hypothetical, that something on the EPO wrapper one day will have such a large adverse effect in the USA as to leave one wishing one had never come to the idea of seeking patent protection outside the USA.

                  And then there is your point about the size of the market in Europe and whether a patent enforceable in (say) DE, FR and GB is enough to control the entire market in Europe. Other than Big Pharma (not my field), it often is, isn’t it? These days, the US medical device makers seem to be finding the European market both lucrative and very competitive. Is the US market, for them, so much more important, I wonder.

                2. MaxDrei,

                  Your song and dance is not becoming. You clamor about ‘what you did not say,’ and then go ahead and say the same thing over again.

                  You got called out for throwing CRP against the wall, and (unrepentant) do it again – all as you shill for the ‘EPO way.’

        3. 4.2.2.3

          Re: “So, for quite a few of my cases, the first time a prosecutor has tried to articulate a specific difference between the references and the claims is in the appeal brief.”
          Ben that may be true, but I had to laugh because of the many times I heard almost the same complaint from the other side, except that “prosecutor has tried to articulate ” was “examiner had paid attention to.”

    3. 4.3

      Examiner’s answers and pre-appeal conferences require the review of at least one SPE and one other SPE/primary.

      1. 4.3.1

        This is the most correct answer. I’d guess that the vast majority (80%+) of withdrawn rejections are due to the requirements for two other examiners to sign off on maintaining the rejection.

        1. 4.3.1.1

          Ben, if you read Jonathan Haidt’s “Righteous Mind”, following on from Kahneman’s “Thinking Fast Thinking Slow” you will find the analogy of the “rogue elephant”, which can be restrained from stampeding in the wrong direction ONLY by two other equally strong elephants, one each side of the rogue, to bring it back on to the correct path.

          This was the thinking in the 1970’s, when they were setting up the EPO. No application gets refused, nor does any application get allowed, until all three Examiners in the Examining Division sign the Votum drafted by the single Examiner “entrusted with the case”.

          Inherently expensive? Yes. Conducive to consistency (quality) and well-reasoned first instance Decisions to allow or refuse? Yes.

          1. 4.3.1.1.1

            MaxDrei,

            Without ‘judging’ the different approach, I will say that ANY approach is only as good as the bureaucracy running the approach.

            One may just as easily see that being stampeded by one rogue elephant would be about the same as being stampeded by three rogue elephants (and this does tie to the prior comment that I made as to the eventual erosion of the value of the pre-appeal conference request, and the FACT that certain art units in the USPTO simply does not care whether an application is deserving under the law. I am more than certain that you are aware of some of the factual dissertations provided at the IPWatchdog site on this issue.

            1. 4.3.1.1.1.1

              I really do recommend the Haidt book.

              1. 4.3.1.1.1.1.1

                There are Papers published (a Link escapes me) to the application of all this “Thinking Fast Thinking Slow” human opinion-forming processes to the way lawyers act and judges decide. Good stuff. You could use it to defend fact-finding by juries.

                1. I think that you miss the point about the impact of a controlling bureaucracy – one or three elephants will not carry the impact that you think it does, in view of the larger effects of the bureaucratic mindset.

                1. Yes, him. And thanks for the clip. In the discussion about rising levels of intolerance, Haidt cites the rising incidence of peanut allergy and what measures can drive it down (introduce children to peanuts much earlier in their lives). the other guy makes an even better point about Republican Clubs on campus (that they don’t exist). Good clip!

                2. Just wanted to check because the dude is all about dismantling the run-away political Liberal Left in this country, and that is not the type that I thought that you would align with.

                3. How interesting. What is the basis of your assertion that Jonathan Haidt:

                  “…is all about dismantling the run-away political Liberal Left in this country”

                  I read his book cover to cover, found it good, and detected no “dismantling” efforts. Where did you get the idea from?

                4. Not having tread that particular book, directly from the link that I provided.

                  PS, if you use the youtube app, it fills your ‘suggested feed’ with similar materials. There are TONS of other podcasts of his of similar nature.

                  Not sure how you can miss this position though with even one podcast.

                5. I had Haidt down as an intelligent, professionally disinterested (meaning: neutral) and enlightened academic who tries to dismantle any argument in his field of study that strikes him as not soundly-based,
                  and irrespective whether or not it is being espoused by a person who aligns with the “Liberal Left”. Am I wrong to see it like that?

                  I find talk of “alignment” unfortunate. I do not see myself as “aligned” with either the loony Left or the rabid Right. Is it not so, that my contributions here would suggest more that I am disaligned than that I am aligned?

                  Here in Germany we have a Parliament in which are sitting at least six political Parties, and in which Government is by a coalition amongst a selection of those Parties. A Parliament with only two Parties results in quite different politics. At this point I recall that tired old joke about the Englishman on a visit to Belfast, asked at the bar, in the pub that evening, whether he is Catholic or Protestant. His reply: neither. I am an atheist. His interlocutor, after a short pause: Yes, but are you a Catholic Atheist or a Protestant Atheist?

                6. Please pardon potential (re) post.

                  MaxDrei,

                  You being ‘non-aligned’…?

                  Unglaubl1ch.

                  You have always had the reputation of a s h 1 l l.

                  As to more of Prof. Haidt, try this from three years ago: link to youtu.be

                  Listen carefully. Note the cessp00l of academia that occurred in the 1990’s (to which I can personally attest – and to which I have commented directly on point previously).

                  Do me the respect of acknowledging points I have long put forth in your new-found view of Prof. Haidt.

                  As to your new comment on the political dynamics of more than two political parties, with due respect, so what does that have to do with anything that we have been discussing, and what does that have to do with any possible resolution to what we have been discussing?

                7. MaxDrei,

                  My reply is getting caught in the filter (and I cannot figure out why).

                  I will try in pieces.

                8. MaxDrei,

                  You being ‘non-aligned’…?

                  Unglaublich.

                  You have always had the reputation of a ___.

                  Let’s see if the word rhyming with thrill is the culprit.

                9. As to more of Prof. Haidt, try this from three years ago: link to youtu.be

                  Listen carefully. Note the cessp00l of academia that occurred in the 1990’s (to which I can personally attest – and to which I have commented directly on point previously).

                  Do me the respect of acknowledging points I have long put forth in your new-found view of Prof. Haidt.

                  As to your new comment on the political dynamics of more than two political parties, with due respect, so what does that have to do with anything that we have been discussing, and what does that have to do with any possible resolution to what we have been discussing?

                10. As to more of Prof. Haidt, try this from three years ago: link to youtu.be

                  Listen carefully. Note the c_ssp__l of academia that occurred in the 1990’s (to which I can personally attest – and to which I have commented directly on point previously).

                  Do me the respect of acknowledging points I have long put forth in your new-found view of Prof. Haidt.

                11. As to your new comment on the political dynamics of more than two political parties, with due respect, so what does that have to do with anything that we have been discussing, and what does that have to do with any possible resolution to what we have been discussing?

                12. Well, I watched your new Link. Yes, of course, Haidt doesn’t like those who would prohibit debate between those who hold different opinions, including those who you call the “Liberal Left”. I would hope that everybody could sign up to that.

                  Here in Germany, we see anger on both the Left and the Right spilling over into serious violence. The more the opportunities for open debate are constrained, I say, the more likely that such violence will erupt. It’s a serious matter.

                  As to my personal politics, i agree with some policies of the SPD, some of the Green Party, and some of the CDU/CSU. All three Parties have stuff I disagree with too. It’s a problem.

                13. Thank you for your response.

                  What I call the Liberal Left is indeed the Far Left – and typically the ones that have, in their Neo Liberalism, invoked the weap0n of identity politics.

                  I very much grant that not everyone who considers themselves “Left” espouse the full gamut of the Liberal Left. Myself included, as I hold many nominative liberal viewpoints.

                14. OK. Terminology is always a tricky area. In politics I have to remind myself frequently, that “Liberal” means one thing in England and something quite different in the USA. In Europe, that which one finds under the “Liberal Democrat” umbrella term is slightly Right of centre, not the extreme Left.

                  But perhaps you are alluding to the notion of the horseshoe spectrum of political opinion, that the extreme Left and Right approach each other.

                15. MaxDrei,

                  I certainly agree that you need to be far more careful when you decide to post on an American patent law blog that you understand not only the context of the discussion, the viewpoints of other posters, but also the viewpoints of the sources that you yourself use.

                  There are times (plenty of times) that you do not seem to be even aware of how much of a shill you are for the ‘EPO way.’ You actually end up often doing a dis-service to the cause that you proselytize for.

    4. 4.4

      “Given that an Applicant will not be appealing until after failure of sustained efforts to convince the Examiner,…”

      I give the examiner one chance to demonstrate that he/she is not engaged in shenanigans. One.

      “… using other channels, what is it in the Appeal Brief, the magic ingredient, that succeeds in turning the Examiner around so often?”

      Most often it is the simple statement that is made by filing a pre-appeal or an appeal brief: Examiner, you are wrong and we’re done with you. We’re going over your head. There will be no RCE and the only half count left in this application is from an examiner’s answer or an allowance. Your choice, examiner.

      1. 4.4.1

        Big +1 AAA JJ.

        I take the same approach.

        Prosecution maxim: Just say no . . . to shenanigans.

  6. 3

    Re; “..The examiner then has two months to file a responsive brief (answer).” [Or, reject on new grounds?]

    1. 3.1

      He covered that: ” Quite often examiners withdraw their rejections after seeing the patent applicant’s brief. “

      1. 3.1.1

        I thought he was referring to allowances.

        1. 3.1.1.1

          You’re probably right. I read it with less optimism.

  7. 2

    Noting, of course, that an application claiming priority to one or more earlier filed applications can and often is an “original” application. See MPEP 201.2.

    (With apologies for the pedantry.)

    1. 2.1

      Yes, calling continuations, CIPs and divisionals “original” applications is how the PTO got away for so many years with false application pendency statistics and consequent false docket pendency control and thus so many “submarine” applications.

  8. 1

    Never rush an Appeal Board. You rush an Appeal Board, you get a rotten Appeal Decision —

    With apologies to Miracle Max

    1. 1.1

      I feel like Max would approve.

      1. 1.1.1

        —-I do this Appeal and an Examiner suffers?

        -Humiliations galore.

        —-Gimme the four hundred. I’m on the job.

        1. 1.1.1.1

          Personally, I love appeals.

          They really break up the monotony of applicants adding limitations and then generically asserting that the current art doesn’t teach the new limitation.

          There’s an actual argument based on the details of the references! And then a third party decides which argument is better! What fun!

          1. 1.1.1.1.1

            applicants adding limitations and then generically asserting that the current art doesn’t teach the new limitation.

            I have seen that in prior prosecution of cases we have inherited (and most likely one of the reasons why we have taken over the cases from other firms).

            I grant that such is a Pss-p00r manner of prosecution (on many levels) as a general point of view (although there are times in which such a fall-back is necessary, given that under a client’s control, prior art searching — something that is NOT required — is sometimes lax or nonexistent.

            And sometimes (FAR too few times) such a fall back is actually the result of excellent examination.

            But, as I have been stating in these boards all the way back to when I first started posting, I WANT excellent examination.

            It is far better for my clients to have this type of thing come up not only in prosecution, but early in prosecution.

            1. 1.1.1.1.1.1

              Re: ” I WANT excellent examination. It is far better for my clients to have this type of thing come up not only in prosecution, but early in prosecution.”
              An admirable view, especially for real products protection. But hardly universal. It does not apply to clients who are more interested in total patent numbers, and/or in saving pre-filing prior art searching and prosecution expenses. Nor does it apply to PAEs who are happy to acquire patents allowed with ridiculously broad claims that can be sued on to obtain litigation-cost-avoidance cash settlements. Which led to the IPRs you are all so fond of.

              1. 1.1.1.1.1.1.1

                It is an ‘admirable view’ regardless of any such “real products” viewpoint.

                If you understood the science and history of innovation (and the running of a business), this would be evident to you.

                Having said that, I DO grant that clients may well have a spectrum of their own understanding and desires, and that at the end of the day, no matter how well one might advise our clients, it is the choices of those same clients that we are charged with deploying.

                Such is reality.

            2. 1.1.1.1.1.2

              I also WANT excellent examination. Sadly, I’m disappointed most of the time. If it takes 10 references for an obviousness rejection, then you just might not have the right art–or maybe it’s not obvious. And if that piece of good art doesn’t show up the first time, quite frankly, unless there was an amendment that completely changes the scope of the claims (who does that?), the examiner failed to do their job.

              1. 1.1.1.1.1.2.1

                “And if that piece of good art doesn’t show up the first time … the examiner failed to do their job.”

                If the job of the examiner is to find the best prior art with one search, why do litigators spend a ton of money on searchers? Seems like they could just pay a retired examiner for 1 count and save a whole bunch.

                In reality, the job of Examiners is to find the best prior art with the time available. There is additional time available after amendments and RCEs. Thus, you should expect some fraction of cases to turn up better art after the initial search.

                Honestly, if you’re engaged with an examiner, and they never find better art after RCE, it’s suggests that they aren’t looking deeper, and thus aren’t doing their job. Those are the guys who are riding the ‘RCE gravy train’.

                1. Ben,

                  This is not the first time that your lack of understanding WHAT your job is (and conflating the internal measures of that job) are put on display with your comments.

                  Sadly, you refuse to listen, learn, and correct your gross error.

                2. That you even posit a relationship between what you do as an examiner and what happens in litigation shows just how out of touch you are with BOTH roles.

                3. Ben, at the EPO Examiners can (and routinely do) shut out amendments that shift the claims to subject matter that is not yet searched. See Rule 137(5) EPC, link below. Rule 137(5) has an amazingly powerful positive effect on the quality of original drafting and (of course) on amendment practice.

                  Is there anything like that at the USPTO?

                  link to epo.org

                4. Max,

                  US Restriction practice sounds like it achieves the same objective, preventing applicant from switching to an entirely new and distinct invention after the initial search.

                5. Ben, I wonder whether restriction practice achieves the same thing as EPC Rule 137(5). Suppose claim 1 is directed to feature combination A+B+C and there are four dependent claims adding, respectively, D, E, F and G. PTO search reveals A+B+C to be common general knowledge and all the dependent claims to lack novelty. What amendment does Applicant offer? Amended claim 1 is now A+B+C+H. For the EPO, that’s unsearched and very likely offends Rule 137(5) whereby it doesn’t even get into the proceedings to be assessed under the substantive conditions of patentability.

                  Can you, in the USPTO, refuse admission to Claim 1 = A+B+C+H?

                6. Since I can’t reply directly to your comment re restriction below, I’ll comment here. Restriction does not have anywhere close to the same approach to anything at the EPO. EPO has a unity of invention standard, which restricts the claims to one invention. Restriction has nothing to do with unity of invention and can (and regularly does) prevent examination of claims that are covered by subject matter that has already been searched.

                7. And for what it’s worth to Max below, I wouldn’t get to excited about how superior applications drafted for European practice are, either. The EPO has its own issues, too, sufficiency of disclosure anality being chief among them.

                8. Litigators pay searchers because it’s way more compelling to argue that the best art (and honestly, it’s just different art) wasn’t found than to say that the Patent Office was aware of the best art and simply ignored it, not because it’s not the examiner’s job to find the best art in order to ensure “compact prosecution.” Plus, it’s really not the litigator’s job to save money.

                9. “it’s suggests that they aren’t looking deeper”

                  Nowhere is it stated that you generally need to look deeper generically across applications. That’s just for the rare event where it’s reqd.

                10. 6,

                  You are responding to Ben, an examiner who cannot get out of his own way and recognize that internal metrics OF the job are NOT ‘the job.’

              2. 1.1.1.1.1.2.2

                Ghost, I’m sorry that you feel this way:

                “The EPO has its own issues, too, sufficiency of disclosure anality being chief among them.”

                but I take comfort in your full-throated utterance that:

                “I also WANT excellent examination”

                I imagine that you would agree, that it’s quite hard to examine for sufficiency of description. Mostly, issues of insufficiency emerge only in post-issue revocation proceedings. Recall the UK PTO prior to 1978. It examined scrupulously for novelty and clarity but not at all for obviousness because the legislator in those days (Patents Act 1949) thought that only in inter Partes proceedings could the obviousness issue be usefully explored.

                The interesting question is, given a Presumption of Validity, whether Patent Offices should even make an attempt, pre-grant, ex Parte, to examine for sufficiency of disclosure and, if so, with what degree of diligence that examination should be conducted. What do you say?

                1. gnd,

                  Be aware that MaxDrei has a bugaboo about the US Sovereign choice of affording a granted patent with both the existence and level of presumption of validity.

                  His thrust here pertains to more than the immediate point at hand.

                2. Never apologize to someone for what they do or how they feel. It’s disingenuous and condescending. Of course that’s what you appear to be going for. If you weren’t trying to be a condescending jerk, I’m sorry you came off that way (see?)

                  For what it’s worth, I’m not alone in finding the EPO approach to sufficiency ridiculous. Even lots of European practitioners think so.

                  The sufficiency of disclosure approach in the EPO is overly rigid and treats the person having ordinary skill in the art as a basic machine that can’t understand context of language. That is, the sufficiency of disclosure approach in the EPO treats a person having ordinary skill in the art as an idiot savant. It’s unreasonable and unrealistic.

                  How should examination be approached? With at least a tiny bit of common sense. I know, I know, common sense isn’t so common. But we’re talking about people with reasonable intelligence and training. Even if individual examiners don’t know what common sense looks like, they can be trained. Leave the absurdities to the litigators (who know better, but hey, it’s their job).

                  I admit that, generally, I prefer the EPO approach in a lot of things over the US approach. But where both systems are broken is where they throw out any common sense around the intelligence, or lack thereof, of a person having ordinary skill in the art.

                3. Good to see that reply, Ghost. You make the mistake of supposing that the word “sorry” constitutes an apology. But if you want to read it as one, I can’t stop you.

                  Otherwise, you can take the word “sorry” as a synonym for “regret” as in “It is a matter of regret that you feel the way you do”. Or is that form of words also, for you, an “apology”?

                  You give us the benefit of your views on sufficiency at the EPO but I think you are barking up the wrong tree. I am in no doubt that what you are so unhappy about is the EPO’s “Gold Standard” for judging what is disclosed by a prior art reference, a priority document or an application as filed, for the purposes of judging i) novelty ii) entitlement to Paris Convention priority and iii) added matter, but NOT any insufficiency of description under Art 83 EPC. Under Art 83 EPC, the usual opinion is that, if anything, the EPO is generally too lax.

                  The Gold Standard is a nice case to illustrate the phenomenon of “cake-ism”. This is when somebody insists on eating their cake, yet also “having” it too . Best example, the UK Government in its negotiations with the EU Commission about its future relationship with the EU. riddled with cake-ism.

                  Ever since the start of the EPC, Applicants have been expert at finding a point of novelty to distinguish the claim from the disclosure of the reference applied, “D1”. The smallest nuance, they argue, is enough to establish novelty over the “disclosure” of D1.

                  But then they amend, resorting to intermediate generalisations of description of the inventive concept nowhere to be found in the application as filed, and flagrantly assert that the amendment adds nothing new to the application as filed, indeed the priority document of one year earlier, using lines of argumentation that are the exact opposite of what they use for establishing novelty. In short, they want to eat their cake and have it too. That’s not on. Period.

                  The strict approach of the EPO to novelty is what it has learned directly from skilled prosecutors over the decades. And anyway, a strict approach to the allowability of prosecution amendments is an artefact of any FtF system (as the USA is going slowly to realise over the next 20 years).

                  And as for European counsel agreeing with you, they are not so unworldly as to fail to realise that their customer is always right. Yes sir, certainly sir. As you say, sir.

                  And then there is the language thing. Hardly anybody at the EPO has English as their first language. Most EPO prosecutors too. Imagine you are an Examiner at, say, the Patent Office in Japan, examining a file all in English. The prosecutor assures you that the amended claim, written in terms nowhere to be found in the application as filed, is free from any technical teaching additional to that of the application as filed. Is it any wonder then, that EPO Examiners want to see verbatim support in the application as filed?

                  And then there is the point that, post-issue, patents in Europe crash out in the courts, very routinely, because of addition of matter during prosecution at the EPO. Quality managers at the EPO do not like this happening. Not at all. and so they try to prevent it happening.

                  All in all, your client should select EPO counsel that tells it to you straight, what you need to do to get patent rights that your client will be able to enforce, after grant, in the patents courts of Europe. None of those courts gives any deference whatsoever to anything the EPO decides on its prosecution (or opposition) file. Getting to issue is just the start. There is no presumption of validity. Think of all those newly-hatched sea turtles heading across the sand to the safety of the sea and providing breakfast for the circling gulls. A patent hatched out by the EPO is like one of those baby turtles breaking out of its egg. One day you will be thankful for a strict approach under pre-issue examination at the EPO.

                  I regret that you suppose the EPO Gold Standard to be “ridiculous”. Wait till your client is Opponent at the EPO, or on the receiving end of an action for infringement. At that point your client (even if not you) will begin to blame the EPO for not being strict enough.

                  Your thoughts?

                4. I was hoping that gnd was more than a fly by night commentator, and that she would engage MaxDrei, but…

                  Anywho,

                  MaxDrei shows his true colors with protecting innovation by exclaiming, “Wait till your client is Opponent at the EPO, or on the receiving end of an action for infringement.

                  Because protecting infringers is what MaxDrei is actually about.

                5. anon,
                  This will be the first and last time I’ll respond without really giving a spit about anything that’s been posted since the last time I posted. But since you invoked me out of all the wasted binary that has cluttered my inbox, I thought I’d grant you your need for attention just this once.

                  I have a job and a life, and I don’t enjoy the particular toxicity many of the commenters here and that other place (especially that other place, where the host feels a particular need for my real name but not those of the men who comment). I’ll post when I feel like it and on what I find of actual interest or importance. In the meanwhile, if you need attention, I recommend you find someone who enjoys patting you on the head for getting the last word in, no matter how much of a waste of time it is.

                6. Well gnd,

                  You waited all this time and then respond with this mewling quip?

                  What kind of bubble-wrap childhood did you have?

                  Here, in the real world, you have to deal with the fact that reality just does not give a rip whether you feel ‘transgressed’ (even micro-ly so).

                  That being said, you absolutely missed the point of my entreaty for your response, as it was NOT a response to me that I was hoping for, but rather I was hoping that you would respond to what MaxDrei put to you.

                  You were too busy feeling hurt to even notice what was being said.

                  If this is the level of your responses, then good riddance and no great loss for your decision to go sulking away.

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