Note: Lay-person explanation below.
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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.
~Relativity
I use the pre-appeal reviews frequently. About half of them result in re-opened prosecution, usually cases with bad anticipation rejections or some claim limitation that has NEVER been addressed by the Examiner. Obviousness rejections are almost always sent on to appeal.
Once I file an appeal brief, about half of those have prosecution reopened instead of an Examiner’s Answer. If you’re keeping score — that’s about 75% of my finally-rejected cases get reopened because the examination wasn’t done right the first time. That’s a huge cost to my clients. Result is that the client pays a lot more than it should, and the Examiner ends up doing more work for no count. Nobody wins.
Don’t ever think that any rational applicant wants the easy cases. I want the best art out there, so I can amend or argue to get past it. I much prefer a tough examination, rather than arguing ridiculous rejections until prosecution is reopened after an appeal brief and for the first time I get a reference cited that makes me think, “Oh, crap, this one’s actually pretty close.” Just do that the first time around — I’ll narrow if necessary, or counsel the client if his application really is dead in the water.
I don’t appeal cases that I shouldn’t. Of the ones that actually get a decision on appeal, I’ve flat-out lost one case in 15 years, and in that case, I knew it was a coin toss. I’m going to lose one more whenever the board gets to it, because the caselaw changed after filing the brief — I didn’t file a reply brief after the AE in that case since I couldn’t argue my position with a straight face after recent court decisions.
Sophisticated applicants and their attorneys want to see the best art now, not in litigation. It’s just maddening to have to appeal a case over an objectively wrong rejection, wasting a year or more of prosecution and thousands of dollars, before seeing a well-reasoned rejection over relevant art. Or, you know, that notice of allowance that all my clients absolutely deserve. 😉
Relativity,
I use the pre-appeal brief process frequently. In general, it works well.
A couple problems:
1) Some examiners still don’t know what it is, or have never been pre-appealed (so to speak), and so they aren’t aware of the procedure and timeline;
2) I don’t think the contractors know what to do with the submission. I filed a pre-appeal brief request, with my Notice of Appeal, in a case, by EFS, on August 24 and it took until October 16 before it was docketed to the examiner. Had another filed September 7, and it took until November something to be docketed. Not sure what is going on with that.
3) PTO (mis)management lied when they claimed that it would be rare if the examiner reviewed the pre-appeal, told the applicant to file the brief, and then re-opened after the brief was filed. Happens often. (Re-opening and PTO (mis)management lying, that is.)
Other than that, it’s pretty effective. If you consider having prosecution re-opened being effective (which I do, at least in the case of a pre-appeal, not in the case of an actual brief being filed), as PTO (mis)management acknowledges that about 50% of pre-appealed cases get re-opened.
Some practitioners use it as a means of punishing the examiner. “No RCE counts for you, examiner, but here’s a pre-appeal, and I’ll keep re-instating the appeal every time you re-open and issue one of those non-counter OA’s.”
I would never do that.
JD
Relativity,
I’ve been doing this (prosecution) for 20+ years. In the last few months I’ve written more Rule 132’s and more Appeal Briefs than I have total in my first 20 years of practice. Why? Because the USPTO has gone down hill big time in terms of “quality” and fairness to inventors. Pre-appeal conferences are a mixed bag. Often the examiner, SPE and TQAS persons are buddies. So the inventor never gets a fair shake to begin with. The pre-appeal conference game is rigged. It’s unfortunate that you are joining the Examiner ranks at such “interesting times” in the history of the USPTO.
Doing a Rule 132 is hugely expensive for inventors. Doing an Appeal Brief is hugely expensive. It costs an examiner nothing. Thus inventors are being driven financially into the ground by the new “quality” tactics employed at the USPTO. If you do not understand that inventors are real people with real emotions and real limits on how much money they have in their wallets then you are living in an ivory tower. Some inventors have spent a life time and small fortunes developing their one great thing only to have it quashed without reason by an unfeeling government bureaucrat –often someone who has no clue about the state of the art or the nuances that one of ordinary skill takes as givens. It’s a sad day for America in terms of what has happened to quality at the USPTO and in our courts. There was a time when examiners cared and did a decent job. There was a time when judges carefully thought things out. Those days seem to belong to a long ago past and a far away galaxy. Sigh.
“Yes, this was the class with the blogger”
Are you going to tell us who you are relativity?
P: My plan has always been to stay anonymous.