Comments on: What the Board of Patent Appeals Can Learn from the NFL http://www.ipwatchdog.com/2009/12/20/what-the-board-of-patent-appeals-can-learn-from-the-nfl/id=7941/ Patents, Software Patents, Patent Applications & Patent Law Thu, 09 Feb 2012 07:58:49 +0000 hourly 1 By: New USPTO Ex Parte Appeal Rules for 2012 | Patents Post Grant Blog http://www.ipwatchdog.com/2009/12/20/what-the-board-of-patent-appeals-can-learn-from-the-nfl/id=7941/#comment-25034 New USPTO Ex Parte Appeal Rules for 2012 | Patents Post Grant Blog Mon, 28 Nov 2011 09:12:09 +0000 http://www.ipwatchdog.com/?p=7941#comment-25034 [...] consideration for that proceeding. As I pointed out some time ago in a guest post for IPWatchdog, a few slight revisions to this proceeding would be highly beneficial. Comment on this article Print This Post stLight.options({ [...] [...] consideration for that proceeding. As I pointed out some time ago in a guest post for IPWatchdog, a few slight revisions to this proceeding would be highly beneficial. Comment on this article Print This Post stLight.options({ [...]

]]> By: step back http://www.ipwatchdog.com/2009/12/20/what-the-board-of-patent-appeals-can-learn-from-the-nfl/id=7941/#comment-10013 step back Tue, 22 Dec 2009 02:17:36 +0000 http://www.ipwatchdog.com/?p=7941#comment-10013 I have a feeling that some pre-appeal conferences are just a charade and that SPE, examiner and TQAS do not actually sit down and talk the case over for 1 hour or whatever, given that no proof of proceedings is needed. However with a situation where applied art is clearly not a reference, it might have been more efficient to telephone the SPE and explain why it is not a reference rather than going through a whole appeal process. At least speaking for myself, I have had some success (not always) in talking to the SPE and getting the rejection withdrawn if the error is an easy one to point out and the SPE is willing to give you 1-3 minutes for a quick elevator pitch. I have a feeling that some pre-appeal conferences are just a charade and that SPE, examiner and TQAS do not actually sit down and talk the case over for 1 hour or whatever, given that no proof of proceedings is needed.

However with a situation where applied art is clearly not a reference, it might have been more efficient to telephone the SPE and explain why it is not a reference rather than going through a whole appeal process. At least speaking for myself, I have had some success (not always) in talking to the SPE and getting the rejection withdrawn if the error is an easy one to point out and the SPE is willing to give you 1-3 minutes for a quick elevator pitch.

]]> By: JNG http://www.ipwatchdog.com/2009/12/20/what-the-board-of-patent-appeals-can-learn-from-the-nfl/id=7941/#comment-10005 JNG Mon, 21 Dec 2009 17:32:59 +0000 http://www.ipwatchdog.com/?p=7941#comment-10005 Sadly enough one of my cases consisted of a very simple question: was a reference prior art? This is something most jr attorneys can answer within a year's worth of training. Believe it or not that was apparently not an easy enough question for three experienced Examiners to answer correctly or succinctly. I got a summary rejection with no reasoning, and it took the Appeals Board to point out the bleeding obvious: that the reference was not in fact prior art. Pretty pathetic. Sadly enough one of my cases consisted of a very simple question: was a reference prior art? This is something most jr attorneys can answer within a year’s worth of training. Believe it or not that was apparently not an easy enough question for three experienced Examiners to answer correctly or succinctly. I got a summary rejection with no reasoning, and it took the Appeals Board to point out the bleeding obvious: that the reference was not in fact prior art. Pretty pathetic.

]]> By: Scott http://www.ipwatchdog.com/2009/12/20/what-the-board-of-patent-appeals-can-learn-from-the-nfl/id=7941/#comment-10003 Scott Mon, 21 Dec 2009 16:26:39 +0000 http://www.ipwatchdog.com/?p=7941#comment-10003 I think a lot of the frustration with this proceeding is rooted in improper use. I think of this mechanism less as a substantive review, and more of a disciplinary control. In other words, if you are arguing that a 103 rejection should be reversed, you are probably not going to get anywhere in pre-appeal. On the other hand, if you are aguing that the Examiner did not address an entire element in a 102, the conference is useful. A succesful conference request points out a very fundamental flaw in the examination, not questions of opinion. I think a lot of the frustration with this proceeding is rooted in improper use. I think of this mechanism less as a substantive review, and more of a disciplinary control.

In other words, if you are arguing that a 103 rejection should be reversed, you are probably not going to get anywhere in pre-appeal. On the other hand, if you are aguing that the Examiner did not address an entire element in a 102, the conference is useful. A succesful conference request points out a very fundamental flaw in the examination, not questions of opinion.

]]> By: Randall Morin http://www.ipwatchdog.com/2009/12/20/what-the-board-of-patent-appeals-can-learn-from-the-nfl/id=7941/#comment-10002 Randall Morin Mon, 21 Dec 2009 14:35:11 +0000 http://www.ipwatchdog.com/?p=7941#comment-10002 In my experience, the conferees consist of the Examiner whose position you are calling into question, the Examiner's SPE who signed-off on the Examiner's position, and a third, quality assurance reviewer. The process might be more useful and effective if the conferees consisted of other or additional fresh eyes (e.g., other Examiners in art unit). In my experience, the conferees consist of the Examiner whose position you are calling into question, the Examiner’s SPE who signed-off on the Examiner’s position, and a third, quality assurance reviewer. The process might be more useful and effective if the conferees consisted of other or additional fresh eyes (e.g., other Examiners in art unit).

]]> By: EG http://www.ipwatchdog.com/2009/12/20/what-the-board-of-patent-appeals-can-learn-from-the-nfl/id=7941/#comment-10001 EG Mon, 21 Dec 2009 13:36:43 +0000 http://www.ipwatchdog.com/?p=7941#comment-10001 I've had some success in getting the pre-Appeal Brief Review procedure to get a Final Action reissued, often to an obviously bad rejection dropped. I admit I've yet to get an instant allowance out of one of these, but if you get 2 of the Examiner's buddies to tell him/her that what they've got is a "loser" you might make some progress. That has led to some allowances. Even if your request is "white-washed," you've at least put the Examiner, as well as the PBAI on notice that you think there are fundamental flaws in one or more of the rejections. The biggest problem I've had with the procedure is that there's no mechanism for ensuring that you get a decision within 45 days as the procedure requires (and nothing will move forward on the appeal, including the need to file an appeal brief until you get such a decision). I've had to call several Examiners that more than 45 days have gone by; they've told me there's no mechanism for notifying them when a conference/decision is due. The best I've been able to get is a promise they'll take it up with their SPE. Has anybody had a different experience on this issue? I’ve had some success in getting the pre-Appeal Brief Review procedure to get a Final Action reissued, often to an obviously bad rejection dropped. I admit I’ve yet to get an instant allowance out of one of these, but if you get 2 of the Examiner’s buddies to tell him/her that what they’ve got is a “loser” you might make some progress. That has led to some allowances.

Even if your request is “white-washed,” you’ve at least put the Examiner, as well as the PBAI on notice that you think there are fundamental flaws in one or more of the rejections.

The biggest problem I’ve had with the procedure is that there’s no mechanism for ensuring that you get a decision within 45 days as the procedure requires (and nothing will move forward on the appeal, including the need to file an appeal brief until you get such a decision). I’ve had to call several Examiners that more than 45 days have gone by; they’ve told me there’s no mechanism for notifying them when a conference/decision is due. The best I’ve been able to get is a promise they’ll take it up with their SPE. Has anybody had a different experience on this issue?

]]> By: uberVU - social comments http://www.ipwatchdog.com/2009/12/20/what-the-board-of-patent-appeals-can-learn-from-the-nfl/id=7941/#comment-9998 uberVU - social comments Mon, 21 Dec 2009 04:25:31 +0000 http://www.ipwatchdog.com/?p=7941#comment-9998 <strong>Social comments and analytics for this post...</strong> This post was mentioned on Twitter by GilmanResearch: What the Board of Patent Appeals Can Learn from the NFL http://bit.ly/6gUsmE... Social comments and analytics for this post…

This post was mentioned on Twitter by GilmanResearch: What the Board of Patent Appeals Can Learn from the NFL http://bit.ly/6gUsmE...

]]> By: JNG http://www.ipwatchdog.com/2009/12/20/what-the-board-of-patent-appeals-can-learn-from-the-nfl/id=7941/#comment-9993 JNG Mon, 21 Dec 2009 01:03:42 +0000 http://www.ipwatchdog.com/?p=7941#comment-9993 When the pre Appeal procedure became available some years ago I tried it in several cases and found it to be a complete time waster. From all appearances the "panels" do little to no work to understand the Applicant's case, which means the Examiner's rejection is rubber-stamped, or, at least, that was my experience in about a half dozen cases before I just stopped using it. I'm curious if others have had better experiences since then. When the pre Appeal procedure became available some years ago I tried it in several cases and found it to be a complete time waster. From all appearances the “panels” do little to no work to understand the Applicant’s case, which means the Examiner’s rejection is rubber-stamped, or, at least, that was my experience in about a half dozen cases before I just stopped using it. I’m curious if others have had better experiences since then.

]]> By: Jason http://www.ipwatchdog.com/2009/12/20/what-the-board-of-patent-appeals-can-learn-from-the-nfl/id=7941/#comment-9992 Jason Mon, 21 Dec 2009 00:47:33 +0000 http://www.ipwatchdog.com/?p=7941#comment-9992 The point of the article is that the conference is frequently a gateway to the Board, and that the Board is looking for solutions to the growing backlog of appeals. The resonsibility of the conference program is irrelevant, certainly the TCs have no interest in revising anything to benefit the Board. Hence, the Board should be taking a closer look at this program. Makes perfect sense to me. The point of the article is that the conference is frequently a gateway to the Board, and that the Board is looking for solutions to the growing backlog of appeals. The resonsibility of the conference program is irrelevant, certainly the TCs have no interest in revising anything to benefit the Board. Hence, the Board should be taking a closer look at this program. Makes perfect sense to me.

]]> By: Michael http://www.ipwatchdog.com/2009/12/20/what-the-board-of-patent-appeals-can-learn-from-the-nfl/id=7941/#comment-9991 Michael Mon, 21 Dec 2009 00:35:03 +0000 http://www.ipwatchdog.com/?p=7941#comment-9991 As I understand it, the BPAI isn't really responsible in any way for the Pre-Appeal Brief Conference program, so it's really the TC's who have something to learn from the NFL. As I understand it, the BPAI isn’t really responsible in any way for the Pre-Appeal Brief Conference program, so it’s really the TC’s who have something to learn from the NFL.

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