Global Intellectual Property Academy Advanced Patents Program

1. Global Intellectual Property Academy Advanced Patents Program Kery Fries, Senior Legal Advisor Mark Polutta, Senior Legal Advisor Office of Patent Legal Administration

2. PRE-APPEAL BRIEF CONFERENCE PRACTICE 1296 Off. Gaz. Pat. Office 67 (July 12, 2005) 1303 Off. Gaz. Pat Office 21 (February 7, 2006) OVERVIEW & TIPS FOR PRACTICE

3. Appeals Process • Notice of Appeal • Pre-Appeal Brief Request (Optional) • Appeal Brief • Appeal Conference • Examiner’s Answer • Board of Appeals

4. Pilot Program: Request a Pre-Appeal Brief Conference With a Notice of Appeal

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

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.

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

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

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

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

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

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

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.

14. Is There a PTO Form? It is suggested, but not required, that you use the PTO Form PTO/SB/33 PRE-APPEAL BRIEF REQUEST FOR REVIEW On the www.uspto.gov web site Go to Index and select Forms to access the Forms page

15. Form PTO/SB/33

16. What Do You Provide? • 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 • Arguments • Not more than five (5) pages, excluding the cover request form • Succinct, Concise & Focused • Identification of CLEAR ERRORS

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

18. What Should Arguments Contain? Omissions of element essential for a prima facie case in Examiner’s Rejection Clear Errors in Examiner’s Rejection And/Or

19. What Should Arguments Contain? Examples -- Reference’s date is clearly not an anticipatory date No motivational statement is provided in a 103 rejection A claim element that is clearly not present in applied art is not included in the examiner’s analysis 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

20. What Should Argument NOT Contain? Examples of what NOT to argue because the panel will consider it more appropriate for consideration during appeal -- Reference’s construction of terms differs from claims Secondary considerations or teaching away in 103 rejections A claim element is not in applied art although the examiner has shown where it is so asserted to be in the rejection Unseasonable traversal of evidence by administrative notice Characteristics of POSITA* rendering 103 improper Dictionary definitions of terms at odds with rejection *Person of Ordinary Skill In The Art

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

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

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

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

25. When Will The Decision Be Mailed? Generally, decisions will be made and mailed within 45 days of receiving the request.

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

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

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.

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.

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.

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.

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

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.

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

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.

36. Thank You