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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
November 29, 2007 11
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
November 29, 2007 12
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
November 29, 2007 13
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.
November 29, 2007 14
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
November 29, 2007 15
Form PTO/SB/33
November 29, 2007 16
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
November 29, 2007 17
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
November 29, 2007 18
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
November 29, 2007 19
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
November 29, 2007 20
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
November 29, 2007 21
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
November 29, 2007 22
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
November 29, 2007 23
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
November 29, 2007 24
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
November 29, 2007 25
When Will The Decision Be Mailed?
Generally, decisions will be made and mailed within 45 days of receiving the request.
November 29, 2007 26
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
November 29, 2007 27
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
November 29, 2007 28
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.
November 29, 2007 29
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.
November 29, 2007 30
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.
November 29, 2007 31
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.
November 29, 2007 32
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
November 29, 2007 33
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.
November 29, 2007 34
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
November 29, 2007 35
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.
November 29, 2007 36
Thank You
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