BCP Partnership Meeting March 15, 20051 Jeffrey V. Nase and Richard Torczon Administrative Patent...
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Transcript of BCP Partnership Meeting March 15, 20051 Jeffrey V. Nase and Richard Torczon Administrative Patent...
March 15, 2005 1
BCP Partnership Meeting
Jeffrey V. Nase and Richard Torczon
Administrative Patent Judges
571-272-9797
[email protected]; [email protected]
Overview of the New Rules on Appealsto the Board of Patent Appeals and
Interferences (BPAI)
Rules of Practice before the Board of Patent Appeals and Interferences, 69 Fed. Reg. 49959 (August 12, 2004); 1286 OG 21 (September 7, 2004)
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BCP Partnership Meeting
Effective date: September 13, 2004
Generally, any paper filed by applicants or mailed by the office on or after September 13, 2004 must comply with the revised or new rules.Appeal briefs filed prior to September 13, 2004 must either comply with former § 1.192 or new § 41.37.Certificate of mailing or transmission in compliance with § 1.8 will be applicable to determine if a paper was filed prior to the effective date in order to determine which rule applies.For more information concerning the effective date, see the Oct. 12, 2004 OG notice, Clarification of the Effective Date Provision in the Rules of Practice before the Board of Patent Appeals and Interferences (final rule), available on the USPTO web site at www.uspto.gov.
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BCP Partnership Meeting
New part 41 for rules relating to appeals and practice before BPAI:
General Provisions – subpart A, §§ 41.1-41.20.Ex Parte Appeal – subpart B, §§ 41.30-41.54. Inter Partes Reexamination Appeal – subpart C, §§ 41.60-41.81.Contested Cases (including interferences) – subpart D, §§ 41.100-41.158.Patent Interferences – subpart E, §§ 41.200-41.208.Section 1.191 has been revised to refer to part 41.Sections 1.192-196 have been deleted.Sections 1.601-690 have been deleted.
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BCP Partnership Meeting
Subpart A – General Provisions:Policy - § 41.1Definitions - § 41.2Petitions - § 41.3Timeliness - § 41.4Counsel - § 41.5Public availability of Board records - § 41.6Management of the record - § 41.7Mandatory notices - § 41.8Action by owner - § 41.9Correspondence addresses - § 41.10Ex parte communications in inter partes proceedings - § 41.11Citation of authority - § 41.12Fees - § 41.20
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BCP Partnership Meeting
Within 20 days of any change during a proceeding
(i.e., after the filing an appeal brief or after the initiation
of a contested case), a party must notify the BPAI
of any change to the real party-in-interest
of each additional judicial or administrative
proceeding that the appellant becomes aware
of that could affect, or be affected by, the BPAI proceeding
Mandatory Notices - § 41.8
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BCP Partnership Meeting
Correspondence in an ex parte appeal and an inter partes reexamination appeal should be mailed to the following address:
Board of Patent Appeals and Interferences
United States Patent and Trademark Office
PO Box 1450
Alexandria, Virginia 22313-1450
Appeal Correspondence Address - § 41.10
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BCP Partnership Meeting
Citations to authority must include:
For any U.S. Supreme Court decision, a United States Report citation;
For any decision other than U.S. Supreme Court decision, parallel citation to both the West Reporter System and Unites States Patents Quarterly, whenever the case is published in both; and
Pinpoint citations whenever a specific holding or portion of an authority is invoked.
Citation of Authority - § 41.12
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BCP Partnership Meeting
Appeal fees
Notice of appeal: $250 (small entity)
$500 by other than a small entity
Brief fee: $250 (small entity)
$500 by other than a small entity
Oral hearing fee: $500 (small entity)
$1,000 by other than a small entity
Petition fee for filing a petition under part 41 of 37 CFR is $400
Fees - § 41.20
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BCP Partnership Meeting
Subpart B – Ex Parte Appeals:Definitions - § 41.30Appeal to Board - § 41.31Amendments and affidavits or other evidence after appeal - § 41.33Jurisdiction over appeal - § 41.35Appeal brief - § 41.37Examiner’s answer - § 41.39Reply brief - § 41.41Examiner’s response to reply brief (supplemental examiner’s answer) - § 41.43Oral hearing - § 41.47Decisions and other actions by the Board - § 41.50Rehearing - § 41.52Action following decision - § 41.54
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BCP Partnership Meeting
Significant Changes for Ex Parte Appeals:
1. The standard for entering affidavits or other evidence submitted after a final rejection now are set forth in § 1.116(e) and § 41.33(d)(1) & (d)(2).
2. The requirements of the content and format of the appeal brief have been revised (§ 41.37).
3. Examiner's answer may include a new ground of rejection (§ 41.39(a)(2)).• Appellant may request that prosecution be reopened
(§ 41.39(b)(1)) when the examiner’s answer includes a new ground of rejection.
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BCP Partnership Meeting
Significant Changes for Ex Parte Appeals:
4. Supplemental examiner's answer is permitted to respond to any new issue raised in the reply brief (§ 41.43(a)(1)).
5. After a BPAI remand for further consideration of a rejection, if an examiner’s answer is written, appellant may request that prosecution be reopened (§ 41.50(a)(2)(i)).
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BCP Partnership Meeting
Notice of Appeal (§ 41.31) Every applicant or owner of a patent under ex parte
reexamination filed before November 29, 1999 any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period set for response.
Every owner of a patent under ex parte reexamination filed on or after November 29, 1999, any of whose claims has been finally rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period set for response.
The signature requirement of § 1.33 of this title does not apply to a notice of appeal.
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BCP Partnership Meeting
FRNoticeOf Appeal
AppealBrief
Decision
§ 1.116§§ 41.33(a) & (d)(1)
§§ 41.33(b),(c) & (d)(2)
The practice for amendments filed after final action, but prior to the date of filing a brief, has not changed (§§ 1.116 and 41.33(a)).
Sections 41.33(a), (b) & (c) apply to amendments.Sections 41.33(d)(1) & (d)(2) apply to affidavits and other evidence.
Amendment Practice
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BCP Partnership Meeting
Section 41.33(b) provides that amendments filed on or after the date of filing an appeal brief may be admitted only to:
Cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or
Rewrite dependent claims into independent form.
No limitation of a dependent claim can be excluded in rewriting that claim into independent form.
Amendment Practice (continued)
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BCP Partnership Meeting
Section 41.33(c) provides that all other amendments filed after notice of appeal will not be entered except:where applicant requests that prosecution be reopened after an examiner’s answer or Board decision including a new ground of rejection;where applicant requests that prosecution be reopened after a supplemental examiner’s answer written in response to a Board remand for further consideration of a rejection; and where applicant amends a claim on appeal in response to an explicit statement of the Board of how that claim may be amended to overcome a specific rejection.
Amendment Practice (continued)
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BCP Partnership Meeting
Affidavits or other evidence filed after final action, but before or on the date of filing a notice of appeal (§ 1.116(e)), may be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented.
Other evidence includes declarations and exhibits, but not IDSs (which are treated in accordance with §§ 1.97 and 1.98).
Affidavit/Evidence Practice
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BCP Partnership Meeting
Affidavits or other evidence filed after the date of filing a notice of appeal, but prior to the date of filing a brief (§ 41.33(d)(1)), may be admitted if the examiner determines that both a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented has been made and that the affidavit or other evidence overcomes all rejections under appeal.
All other affidavits or other evidence filed after the date of filing a notice of appeal will generally not be entered (§ 41.33(d)(1)) except where applicant requests that prosecution be reopened after an examiner’s answer or Board decision including a new ground of rejection; or after a supplemental examiner’s answer written in response to a Board remand for further consideration of a rejection.
Affidavit/Evidence Practice (continued)
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BCP Partnership Meeting
Appeal Brief – copy requirement
and time for filing (§ 41.37)Only one copy of the brief is required.
The brief is required to be filed within two months from the date of filing of the notice of appeal.
The time allowed for reply to the action from which the appeal was taken is no longer relevant.
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BCP Partnership Meeting
Appeal brief – Content (§ 41.37(c))
i. Real party in interest.
A statement identifying by name the real party in interest even if the party named in the caption of the brief is the real party in interest.
ii. Related appeals and interferences.
Identification of all other prior and pending appeals, interferences or judicial proceedings which may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision.
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BCP Partnership Meeting
Appeal brief – Content (§ 41.37(c))
iii. Status of claims.
The status of all the claims in the proceeding (e.g., rejected, allowed or confirmed, withdrawn, objected to, canceled) and an identification of the appealed claims.
iv. Status of amendments.
A statement of the status of any amendment filed subsequent to final rejection.
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BCP Partnership Meeting
Appeal brief – Content (§ 41.37(c))
v. Summary of claimed subject matter.A concise explanation of the subject matter defined in each of the independent claims involved in the appeal, which refers to the specification by page and line number, and to the drawing, if any, by reference characters. For each independent claim involved in the appeal and for each dependent claim argued separately, every means plus function and step plus function must be identified, and the structure, material, or acts described in the specification as corresponding to each claimed function must be set forth with reference to the specification by page and line number, and to the drawing, if any, by reference characters.
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BCP Partnership Meeting
Appeal brief – Content (§ 41.37(c))
vi. Grounds of rejection to be reviewed on appeal.A concise statement of each ground of rejection presented for review. Example: Claims 1 to 10 stand rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. X.
vii. Argument.The contentions of appellant with respect to each ground of rejection presented for review, and the basis therefore, with citations of the statutes, regulations, authorities, and parts of the record relied on.
Any arguments or authorities not included in the brief or a reply brief will be refused consideration by the BPAI, unless good cause is shown.
March 15, 2005 23
BCP Partnership Meeting Appeal brief – Content (§ 41.37(c))
vii. Argument (continued).A separate heading is required for each ground of rejection.Any claim(s) argued separately should be placed under a subheading.When multiple claims subject to the same ground of rejection are argued as a group, the Board may select a single claim from the group to decide the appeal with respect to the group of claims as to the ground of rejection on the basis of the selected claim alone.A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.
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BCP Partnership Meeting
Appeal brief – Content (§ 41.37(c))
viii. Claims appendix.A copy of the claims involved in the appeal.
ix. Evidence appendix.Copies of any evidence entered and relied upon in the appeal along with a statement setting forth where in the record that evidence was entered in the record by the examiner.Reference to unentered evidence is not permitted.
x. Related proceedings appendix. Copies of decisions rendered by a court or the Board in any proceeding identified in the related appeals and interferences section.
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BCP Partnership Meeting
Non-compliant appeal briefs (§ 41.37(d))
If the examiner or the BPAI determines that a brief does not comply with all the requirements set forth in § 41.37(c), the appellant will be notified of the reasons for noncompliance. The appellant will be given an extendable time period (e.g., one month or 30 days) from the mailing of the notification of non-compliance to file an amended brief.
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BCP Partnership Meeting
A new ground of rejection is now permitted in an examiner’s answer mailed on or after September 13, 2004 (§ 41.39(a)(2)).
A new ground of rejection should be rare, rather than a routine occurrence.
Any new ground of rejection made in an answer must be:Approved by a Technology Center Director or designee; andProminently identified (e.g., a separate heading with all capitalized letters) in the Grounds of Rejection to be Reviewed on Appeal section and the Grounds of Rejection section of the answer.
Examiner’s Answer (§ 41.39)
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BCP Partnership Meeting
Technology Center Authorized Person(s) 1600 Directors only. 1700 Directors only 2100 Directors only 2600 Directors, SPREs, and Qas. 2800 Directors, Qas, Art Grimely,
Georgia Epps, and Olik Chaudhuri. 2900 Directors only. 3600 Directors only 3700 Directors only.
Persons authorized to approve new grounds of rejections in an Examiner’s Answer
http://www.uspto.gov/web/offices/dcom/bpai/fr2004/ngtcauth.pdf
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BCP Partnership Meeting
Appellant options if examiner's answer includesa new ground of rejection (§ 41.39)
If an examiner’s answer contains a new ground of rejection, appellant must, within two months, either:
1. Request that prosecution be reopened by filing a reply under § 1.111; or
2. Request that the appeal be maintained by filing a reply brief.The two month time period is not extendable under § 1.136(a).If appellant fails to take action, the appeal will be sua sponte dismissed as to the claims subject to the new ground of rejection.
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BCP Partnership Meeting
Reply brief (§ 41.41)
Appellant may file a reply brief to an examiner’s answer within two months from the mailing of the examiner’s answer.
If examiner provides a supplemental examiner’s answer to respond to a reply brief (see § 41.43), appellant may file another reply brief within two months from the mailing of the supplemental examiner’s answer (see § 41.43(b)).
Extensions of time under § 1.136(a) are not available for filing a reply brief.
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BCP Partnership Meeting
Examiner's response to reply brief (§ 41.43)
After receipt of a reply brief, the examiner can acknowledge receipt and entry of the reply brief. In addition, if a reply brief includes a new issue (e.g., appellant for the first time argues that the secondary reference is nonanalogous art), the examiner may:
Withdraw the final rejection and reopen prosecution; or Furnish a supplemental examiner's answer responding to any new issue raised in the reply brief.
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BCP Partnership Meeting
Examiner's response to reply brief (§ 41.43) (continued)
A Technology Center Director or designee must approve every supplemental examiner’s answer. Persons authorized to approve supplemental examiner’s answer are the same persons who are authorized to approve new grounds of rejections in an Examiner’s Answer (see slide 22).
A supplemental examiner’s answer responding to a reply brief may not include a new ground of rejection.
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BCP Partnership Meeting
Oral Hearing (§ 41.47)
If appellant desires an oral hearing, appellant must file, as a separate paper captioned "REQUEST FOR ORAL HEARING," a written request for such hearing accompanied by the fee set forth in § 41.20(b)(3) within two months from the date of the examiner's answer or supplemental examiner's answer.At the oral hearing, appellant may only rely on evidence that has been previously entered and considered by the primary examiner and present argument that has been relied upon in the brief or reply brief except upon a showing of good cause, appellant may rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court.
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BCP Partnership Meeting
Remand for further consideration of a rejection.If a supplemental examiner’s answer is written after such a remand, appellant must, within two months, either:
1. Request that prosecution be reopened by filing a reply under § 1.111; or
2. Request that the appeal be maintained by filing a reply brief.
If appellant fails to take action after a supplemental examiner’s answer is written, the appeal will be sua sponte dismissed as to the claims subject to the rejection for which the Board has remanded for further consideration.
Decisions/actions by the Board (§ 41.50 )
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BCP Partnership Meeting
New ground of rejection.The appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims:
1. Reopen prosecution by submitting an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner.
2. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought.
Decisions/actions by the Board (§ 41.50 )
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BCP Partnership Meeting
Appellant may file a single request for rehearing within two months of the date of the original decision of the Board. The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing except either
upon a showing of good cause, appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court; ornew arguments responding to a new ground of rejection made pursuant to § 41.50(b).
Rehearing (§ 41.52)
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BCP Partnership Meeting
Contested casesincluding patent interferences
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BCP Partnership Meeting
Types of contested casesCurrently mainly patent interferences 35 U.S.C. 135(a)
A few government ownership disputes 42 U.S.C. 2182(4): Department of Energy 42 U.S.C. 2457(d): NASA
In the future, patent cancellations? The new contested case rules provide a
model
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BCP Partnership Meeting
Key changes topatent interference practice
Limited issues allowed and decidedReplaced petitions with miscellaneous motionsClarified basis for claim correspondence
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BCP Partnership Meeting
Limited issues for decision
PriorityAlso the touchstone for necessary issues
Issues necessary to decide priorityThreshold (standing) issuesScope of the count (interfering subject matter)Benefit for purposes of 35 U.S.C. 102(g)(1)
Claim correspondenceOther issues up to the discretion of the Board
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BCP Partnership Meeting
Lists of intended motionsPriority statements
Motions list requires more precisionPriority (preliminary) statement is simpler, but must be exhaustiveA bad list/statement may preclude reliefSecond chance not likely
(Phase-in period to accommodate learning)
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BCP Partnership Meeting
Petitionable issues during a contested case
Relief sought via miscellaneous motionNo petition per se
Could be delegated to another part of the Office, if appropriateOtherwise, decided at the BoardPanel decision is finalJudicially reviewable as part of judgment
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BCP Partnership Meeting
Claim correspondenceclarified
Two theoriesClaims of both sides directly interfereClaims estopped by loss on priority
Could produce different outcomesNew rule picks estoppel theory
Lost count bars anticipated or obvious claimsRemedy: move to change count or correspondence
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BCP Partnership Meeting
Declaration tipsClean up everything – it is cheaper ex parte
File disclaimers, correct inventorship, divide out non-corresponding claims
Help the examiner set up the interferenceIt is your best chance to frame the case your way
Examiner requirements do not need a rejection
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BCP Partnership Meeting
Help in the CorpsDuring interference, work only through the BoardBefore and after, consult an interference practice specialist (IPS) in the relevant Tech Centerhttp://www.uspto.gov/web/offices/dcom/bpai/IPS-list.htm
Having trouble getting a suggested interference declared?
Make sure you have allowed, interfering claimsIf so, and the IPS cannot help, contact Dan Hunter at:
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Go to the USPTO home page (http://www.uspto.gov/) and click on Advanced Search (which will go to http://www.uspto.gov/main/sitesearch.htm)
Put your search terms in the box following “Find these words"
In the “Select a Site Search Collection” drop-down box select either “Board of Patent Appeals and Interferences Decisions” or “Interference Trial section Opinions”
Click the Search button to get the results
Web Searching Board Decisions
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BCP Partnership Meeting
Web Searching
Board Decisions
March 15, 2005 47
Thank You