Biotech Customer Partnership August 3, 2004

1. Biotech Customer PartnershipAugust 3, 2004 Jasemine C. Chambers, Ph.D., J.D. Director Technology Center 1600 USPTO (571) 272-0500 jasemine.chambers@uspto.gov

2. TC1600 Restriction Action Plan: Update

3. Review of TC1600 Restriction Practice Action Plan The action plan includes 5 initiatives: • Publish Examples Of Claim Sets • Emphasis On Rejoinder Practice • Examiner Training On Restriction Practice • Enhanced Review Of Restriction Requirements • Continuous Assessment

4. Review of TC1600 Restriction Practice Action Plan-progress • Publish examples of claim sets • Provide examples that do not present a serious burden on the office • We are working on this and anticipate publication this FY

5. Review of TC1600 Restriction Practice Action Plan-progress • Emphasis on rejoinder practice • Provide a new rejoinder paragraph • Remind applicants of their options on rejoinder • This has been implemented

6. Review of TC1600 Restriction Practice Action Plan-progress • Examiner training on restriction practice • Emphasize proper restriction practices • Claim groupings and support/formulation of restriction requirements • Provide art unit/workgroup specific examples • Publish materials • We will train the examiners once the training materials, which are nearing completion, are finalized. After training is completed we will post the training materials on the USPTO web site.

7. Review of TC1600 Restriction Practice Action Plan-progress • Enhanced review of restriction requirements • Review art units with high number of restrictions and indications of inconsistent requirements • Includes reviewing restrictions in 2nd and subsequent actions • This has been implemented

8. Review of TC1600 Restriction Practice Action Plan-progress • Continuous assessment • Collect data from reviews and samplings • Survey customers on impact of action plan • We are currently collecting data from reviews

9. Appeals Conferences

10. Appeals Conferences • An appeals conference is mandatory in all cases in which an acceptable appeal brief has been filed and the examiner in charge of the application is going to proceed with the appeal and write an examiner’s answer (MPEP 1208).

11. Appeals Conferences • The participants in an appeals conference are: • The examiner • The examiner’s SPE • A conferree • The conferee is preferably another SPE, SPRE, QAS, or TCPS. However, the conferee may also be a primary examiner having sufficient experience and knowledge to be of assistance in the consideration of the merits of the issues on appeal.

12. Appeals Conferences • The Board of Patent Appeals and Interferences will return all cases that do not include the stamp and initials of the conferees to the technology center.

13. Appeals Conference Outcomes • A Notice of Allowance may be issued. • An Examiner’s Answer may be issued. • A new action may be issued.

14. Appeals Conference Outcomes-data • FY03: • Exmr. Answrs 426 (44.6%) • Re-openings 282 (29.5%) • Allowances 237 (24.8%) • FY04 (from a month on so ago): • Exmr. Answrs 229 (60.1%) • Re-openings 84 (22.0%) • Allowances 61 (16.0%)