“131 Part II…”

Today was part two of our 131 affidavit lectures.  One of the things that strikes me as incredibly interesting about the lectures on 131s is that it doesn’t seem to be straightforward.  Perhaps I should explain.

When we first started learning about 102 rejections, one of the important points that was drilled in was that 102(b) is a statutory bar, whereas 102(a) and (e) can be overcome by swearing behind the reference (submitting an affidavit saying that the invention was actually conceived/created before the 102 reference).  It was a simplified explanation, as was necessary to convey the important points to us.  However, I always felt like there was an implied “just” right before the phrase “swearing behind.”  It wasn’t until I was reading another forum or blog, and someone mentioned that it wasn’t, in fact, so easy to swear behind a reference that I started to wonder if my assumption was incorrect.   Apparently it was.

Towards the end of the lecture today, we got some tips on avoiding 131 affidavits.  Why avoid them? They cost lots of money for applicant.  They are non-trivial to file.  Our presenter pointed out that when the examiner cites only a 102(e) or (a) reference in the rejection, the implication is that the reference is the best art available, and that the date is what stands in the way of patentability.  It would be… frustrating… to applicant to have them spend lots of money on the 131, only to come back with a 102(b) or well-reasoned 103 indicating that there was not, in fact, allowable subject matter.

Thanks for the comments on the last post, btw.  I do appreciate the insights!



Note: Lay-person explanation below.

Note 2:  Spam got so bad in the comments that I had to move to new spam-blocking software.  If your comments aren’t being posted in a timely fashion, send me an email and let me know; I’ll try to find your comment and unblock it.  If it’s a regular problem, I’ll try to find another solution.

We had a lecture on Appeal Briefs today.  It was especially interesting in light of the proposed rules package (as mentioned on just-n-examiner’s blog).

To the presenter (who asked): Yes, this was the class with the blogger, yes, I was there today, and yes, you did a fine job presenting.  Thank you for taking the time out to speak with us.  I haven’t mentioned it in a while, but I still do appreciate the work of the speakers who come to talk to us.   For the most part, they are energetic people who seem to enjoy both teaching and the subject matter.

I think we went into just enough detail for an intro to the topic: we covered the periods for reply, what is required and optional for an appeal brief, and the (very) basics of the Examiner’s Answer. Since writing an Examiner’s Answer is going to be so far off into the future for most of us, it probably wouldn’t make sense to go into to too much more detail than we did today.

I do have a question about Pre-Appeal Briefs for the practitioners out there: I see a lot of comments on JPE’s site about the cost of appeal briefs, only to have examiner’s reopen prosecution after the brief has been filed.  In our class, we discussed the Pre-Appeal Brief option, which seems to allow applicants to provide a very short pre-appeal brief which would be reviewed by a panel to see if prosecution should be reopened, or if the case should go to the board.  Is this option used? Do practitioners find it to be effective?  From my naive perspective, it makes me wonder why there’s still a problem with examiners reopening prosecution after an appeal brief.

Layperson explanation: When an examiner rejects claims twice, applicants can appeal to the Board of Patent Appeals and Interferences.  This is applicant’s first avenue for judicial relief if applicant feels that the Office is not properly rejecting their claims.  When applicants want to appeal, they are required to submit an Appeal Brief, which is very, very costly for applicant.  Examiners then must write an Examiner’s Answer in reply to the Appeal Brief.


“Stop Interfering!”

We had two lectures today, both from representatives of the BPAI (Board of Patent Appeals and Interferences).

The first lecture dealt with interferences. The easiest way to sum it up would be “find someone who knows what they’re doing.”  Basically, interferences fall into that territory where two applications or an application and a patent are claiming the same invention, but the prior application/patent cannot be used as art against  the other.  They are very rare.  They are complicated.  I won’t even begin to pretend to understand what goes on, there.  The three most important things I pulled from the lecture are: the application must otherwise be in condition for allowance, get help from an interference specialist in your TC, and the BPAI takes care of the dirty work.

The second lecture concerned how to create better office actions, with a focus on making prosecution understandable to whoever might be reading the file file wrapper, including BPAI judges.

We also had a small “ice cream social” this afternoon, which was nice.


“I’ll Allow It…”

Today we had a class on interview practice and one on allowances. The interview class was partially repetition, since we have covered interviews to some extent in prior lectures, and because many people have already conducted interviews by now.

Our class on allowances covered the procedure for checking that a case was in condition for allowance in terms of formalities and in terms of interference. As I’ve covered before, objections point out a conflict with a rule or a formal matter with the application. A title that isn’t descriptive, for example, or an abstract that is too long. Rejections indicate conflicts with the patent laws themselves. There are cases where an application conflicts with none of the statutes (it is enabled etc under 112, falls into a statutory category and does not otherwise conflict with 101, has no prior art under 102 or 103 that could be used against it, etc) but has some formal issues. Some of these can be taken care of by an examiner’s amendment to the application, and some of them must be taken care of by the applicant or applicant’s representative.

We also covered good practice in terms of writing reasons for allowance and making the record (including search histories) clear. Examiners often write up an explanation of why the application was allowed, called the “reasons for allowance”. This is important because it is the final opportunity for the examiner to explain on the record what distinguishes the invention from the prior art. After all, it is unlikely there is nothing anywhere even similar to what is claimed. So the examiner should explain what feature or features make the instant application different from what is known in the art. In first action allowances, reasons for allowance are the only real prosecution history there is, so the examiner should clearly set forth his or her reasons for going straight to allowance. And of course, it is improper for an examiner to narrow the scope of the claims in the reasons for allowance; that is, examiners don’t get to make claims mean what we’d like them to mean just so they can get pushed out the door.

We also briefly went over making our search histories complete, which may be a somewhat neglected art. That is, while examiners often do thorough searches, if those searches aren’t detailed in the search history, there is no record of them for the public or the courts to refer to. EAST and WEST make it easy to supply this history when searching the patent databases, but it can be more difficult when searching non-patent literature to keep an accurate record of the search performed.

Finally, we discussed interferences briefly. I’ll put off that topic until we have our lecture on it, tomorrow.



We had 2100B today, same format as 2100A.

I don’t know (and am too lazy to check) if the notes we use are available to those outside the PTO, but we have what amounts to a highly condensed MPEP that we use to provide us with the “highlights” for the certification exam.  An examiner prepared these notes, chapter by chapter, when he was studying for the sig test.  They’re great notes, and they usually do hit the salient points well.

I’m not so sure how well they transfer to a lecture format, but they are very helpful to get a quick overview of a chapter in the MPEP, and to get familiar with what can be found in each chapter.