November 29, 20071 Global Intellectual Property Academy Advanced Patents Program Kery Fries, Senior Legal Advisor Mark Polutta, Senior Legal Advisor Office

November 29, 2007 1

Global Intellectual Property Academy Advanced Patents

ProgramKery Fries, Senior Legal Advisor

Mark Polutta, Senior Legal Advisor

Office of Patent Legal Administration

November 29, 2007 2

PRE-APPEAL BRIEF CONFERENCE PRACTICE

OVERVIEW & TIPS FOR PRACTICE

1296 Off. Gaz. Pat. Office 67 (July 12, 2005)

1303 Off. Gaz. Pat Office 21 (February 7, 2006)

November 29, 2007 3

Appeals Process

• Notice of Appeal

• Pre-Appeal Brief Request (Optional)

• Appeal Brief

• Appeal Conference

• Examiner’s Answer

• Board of Appeals

November 29, 2007 4

Pilot Program:

Request a Pre-Appeal Brief

Conference With a

Notice of Appeal

November 29, 2007 5

Pre-Appeal Conference

• Background– 21st Century Strategic Plan – Quality– Approximately 60% of all appealed cases are “not”

forwarded to BPAI

• Action Plan– Review to determine whether Appeal is warranted

November 29, 2007 6

Why This Pilot Program?

• TC’s already provide appeal conferences after the submission of an Appeal Brief

• Over half of the appeal conferences result in allowance or reopening of prosecution

• Thus, this pre-brief review procedure may eliminate, or reduce, the time and expense to prepare an Appeal Brief and expedite the prosecution process.

November 29, 2007 7

Goals

• Avoid Filing Appeal Brief When You Can:

• Or, Alternatively, Reduce Size and Cost of An Appeal Brief– Identify clearly improper rejections because of

factual errors– Identify clear absence of prima facie case– Narrow focus to true issues in controversy

November 29, 2007 8

Who Can Use This Procedure?Anyone who is filing a

Notice of Appeal

(except under patent reexamination)

WHEN Can It Be Requested?

ONLY WITH the Notice of Appeal

November 29, 2007 9

Should You Request a Pre-Brief Conference?

• Yes – IF all or some of the rejections of record– Are CLEARLY improper and without basis– Are CLEARLY based on factual or legal error

• No – IF the rejections of record– Articulate a prima facie case that requires

further evidence, or interpretation of the claims; of the applied art; or of other evidence, to rebut

November 29, 2007 10

How To Potentially Avoid Even Needing This Procedure

Request Reconsideration

of the Final Rejection

Clearly Show the Errors

To the Examiner in an

After Final Communication

Before Filing Notice of Appeal


What If You Believe That Some Rejections Are Appropriate for Appeal

But Some Are Not?

You may narrow the focus of the conference to claims you select as having clearly erroneous

rejections.

However, consider beginning preparation of an Appeal Brief for the claims unselected for

conference early on.

Request Pre-Brief Appeal Conference on Selected Rejections


What If You Do Not Include A Request With A Notice of

Appeal?

A request for a Pre-Brief Conference submitted

before or after the notice of appeal will be dismissed as

untimely


What is the Fee?

At present, there is no fee for the request.

The fee for the Notice of Appeal remains.

The fee for the Notice of Appeal is non-refundable, even in the event of a favorable

outcome from the Pre-Appeal Brief conference.


Is There a PTO Form?

It is suggested, but not required,

that you use the PTO Form

PTO/SB/33PRE-APPEAL BRIEF REQUEST FOR REVIEW

On the www.uspto.gov web siteGo to Index and select Forms to access the Forms page

http://www.uspto.gov/


Form PTO/SB/33


What Do You Provide?

1. Written Request • Preferably, use the USPTO Form PTO/SB/33

• Otherwise, label a request as “Pre-Appeal Brief Request For Review”

• Must be filed with the Notice of Appeal

2. Arguments– Not more than five (5) pages, excluding the cover

request form– Succinct, Concise & Focused– Identification of CLEAR ERRORS


What Does the USPTO Do?

• Technology Center (TC) convenes a panel– TC managers and conferees experienced in the

pertinent field of technology

– Includes a SPE and examiner of record

• Panel reviews rejections identified by request, arguments submitted with the request, and application file

• Panel decides if an issue for appeal is present


What Should Arguments Contain?

Clear Errors in

Examiner’s Rejection

Omissions of element

essential for a prima facie

case in Examiner’s Rejection

And/Or


What Should Arguments Contain?

Examples --

A claim element that is clearly not present in applied art is not included in the examiner’s analysis

Reference’s date is clearly not an anticipatory date

No motivational statement is provided in a 103 rejection

No evidentiary basis for a 103 motivation is provided in the rejection

Support in the disclosure is clearly found contrary to a 112(1) rejection

Inventive entity is clearly not one to which reference can be applied


What Should Argument NOT Contain?

Examples of what NOT to argue because the panel will consider it more appropriate for consideration during appeal --

A claim element is not in applied art although the examiner has shown where it is so asserted to be in the rejection

Reference’s construction of terms differs from claims

Secondary considerations or teaching away in 103 rejections

Unseasonable traversal of evidence by administrative notice

Dictionary definitions of terms at odds with rejection

Characteristics of POSITA* rendering 103 improper

*Person of Ordinary Skill In The Art


TIP – Arguments

• Make your case clear and concise– Argument should demonstrate that something is

clearly erroneous or there is an omission of something essential

– A subtle legal brief is not helpful – make it painfully obvious where the error or omission is

– Use your five page allowance creatively with diagrams, pictures, charts


TIP – Arguments

• Use diagrams or figures to demonstrate where the problem lies– Copy a claim at issue and draw a box around an

element for which no art is applied with a caption “no art applied to this”

– Embed a copy of a 103 rejection and put in big bold letters “No motivation” or “No evidence of motivation” with an arrow pointing to the rejection


TIP – Arguments

• Use diagrams or figures to demonstrate where the problem lies– Draw time lines to demonstrate why an applied

reference is unqualified as prior art because of dates

– Where the error is clearly counter to the MPEP, copy the portion of the MPEP (available at www.uspto.gov) in big, bold type that makes your point

http://www.uspto.gov/


Panel’s Decision

• Decision will relate claims’ status and simply state one of the following:– Application remains under appeal– Prosecution is reopened– Application is allowed– Request is noncompliant and is dismissed

No analysis will accompany the decision – appellant provides analysis and conferees agree or disagree


When Will The Decision Be Mailed?

Generally, decisions will be made and mailed within 45 days of receiving the request.


What Do You Do If Application Remains Under Appeal After

Decision, or If Request is Dismissed?

• Proceed by filing an appeal brief– There is no request for reconsideration practice

because the appeal process remains in effect and presents the next level of consideration

• File RCE or Continuation

• Abandon


How Long Do You Have To File Appeal Brief Following

Decision?

• You Have the Longer of– Time Remaining From Notice of Appeal

OR– One Month From Mailing of Decision

Usual time extensions may be obtained by fee


What If One Month Is Insufficient To File Appeal Brief

Following Decision?

If One Month Will Be Insufficient To Prepare An Appeal Brief, Consider Whether the Complexity of

the Issues Really Does Require BPAI Level Consideration.

You may obtain extensions of time with fee.


How Long Will This Procedure Be In Effect

The procedure is under pilot study beginning July, 2005

It will be re-evaluated at the termination of the pilot study.


Can A Conference Be Requested With Any Notice of Appeal?

The procedure may be requested with any Notice of Appeal EXCEPT those for

reexamination proceedings.


What If You Want to Enter an Amendment After Final?

Amendments and Affidavits with or after Notice of Appeal

Terminate Any Pre-Appeal Brief Conference Proceedings.


What If You Want to Enter Some Other Action After A Request?

Any RCE, continuation, or abandonment,

any Appeal Brief, any amendment,

any affidavit, or any other form of evidence, submitted after making a request for a pre-appeal

brief conference, will cause the request to be dismissed.

An IDS having no bearing on the request may be submitted, but will not be considered by the panel


What If You Want to Enter a Supplement To Your

Arguments?

No supplemental arguments will be accepted.

Supplemental replies will not be entered or considered in the proceedings.


What If You Want to Orally Present Your Arguments?

No applicant or applicant representative participation or

attendance is permitted in a Pre-Appeal Brief Conference


Added Review By a Fresh Party At No Cost – Why Don’t I Request Conference

As a Matter of Course?Whenever you have a clear case, you should.

If the application is going to appeal or be subject to RCE anyway, requesting a conference only delays the process and adds your time and expense of preparing the request. If you do not have a clear case, you will likely be filing an appeal brief anyway.

Even if you have a solid argument as to error, you are better off making it first in an after final amendment to the examiner, prior to requesting a conference. You may avoid even needing a conference.


Thank You

Documents

November 29, 20071 Global Intellectual Property Academy Advanced Patents Program Kery Fries, Senior Legal Advisor Mark Polutta, Senior Legal Advisor Office