Posts Tagged: "ex parte appeals"

On June 7, the U.S. Patent and Trademark Office’s (USPTO’s) Director’s Blog published a post authored by USPTO Director Kathi Vidal announcing that the agency is now receiving applications from inventors seeking free legal assistance to bring ex parte appeals of patent examiner rejections to the Patent Trial and Appeal Board (PTAB). While Vidal’s announcement is certainly welcome news to many inventors who are in financial need, it fails to address larger issues faced by inventors at the PTAB that have been voiced by members of Congress and the inventor community alike in recent months.

Once a rejection by the U.S. Patent and Trademark Office (USPTO) is designated as at least one “final” office action (which typically occurs when the office action is at least a second office action issued after filing), the applicant has the opportunity to engage with a different decision-maker. That is, the applicant can appeal a pending rejection to the Patent Trial and Appeal Board (PTAB), and at least three PTAB judges will then evaluate the rationale provided by the examiner and applicant (referred to as an “appellant” when the PTAB is handling a matter). Alternatively, the applicant can continue to engage with the examiner (which may require filing a Request for Continued Examination and paying the associated fee) or can let the application go abandoned.

On Friday, March 26, the United States Patent and Trademark Office (USPTO) conducted virtual LEAP training. LEAP stands for Legal Experience and Advancement Program and is a series the USPTO is fostering in order to help inexperienced practitioners develop the skills and practical experience necessary to effectively advocate on behalf of clients. Previously, the USPTO had offered LEAP training with respect to contested cases challenging patents post grant. On this day, however, the training focused on ex parte appeals to the Board from an examiner, which Patent Trial and Appeal Board (PTAB) Chief Judge Scott Boalick characterized as “the bread-and-butter work” of the PTAB.

Despite their best efforts, patent practitioners may reach an impasse during negotiations with patent examiners at the United States Patent and Trademark Office (USPTO). If an applicant still desires patent protection, it can authorize the filing of a notice of appeal to the Patent Trial and Appeal Board (PTAB) and an associated appeal brief. Thus begins an ex parte appeals process in which a panel of at least three administrative patent judges (APJs) considers patentability of the rejected claims. Over the years, I’ve observed some patent attorneys and agents approach ex parte appeals as essentially a document assembly exercise: arguments from past Office action responses are pasted into a template and then submitted to the PTAB. In my view, such an approach represents a missed opportunity to present the strongest possible case for patentability. In a worst-case scenario, it may even prevent a client from securing the patent protection it deserves. To maximize clients’ chances of success, practitioners instead should approach appeals with the mindset of a strategist and advocate.

Dissent is not the highest form of judgment for judges on the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO).  As discussed in further detail below, our own analysis indicates that dissents for ex parte appeals are found in about .5% of decisions issued by the PTAB.  A PTAB judge deciding an ex parte appeal is more than ten times less likely to dissent than a Federal Circuit (CAFC) judge. Relying on internal USPTO policies and former PTAB judges’ personal experiences, a recent spate of commentary has provided different explanations regarding the rarity of dissents for ex parte appeals.  We were still left wondering why some judges go out of their way to write dissents.  In an effort to better understand this issue and what the dissents might reveal about the ex parte appeal process in general, we conducted a statistical analysis of dissents in recent ex parte appeal decisions.

In a prior abandoned patent application, VerHoef listed himself as joint inventor of the dog mobility device with Dr. Lamb, the veterinarian making the suggestion; this joint venture failed and then each party tried to file competing patent applications. This was all done at a time when VerHoef was not well acquainted with patent law according to Thomas Loop, patent attorney at Loop IP Law representing VerHoef in the case. “All inventors take limitations and elements from others, that’s the essence of inventions,” Loop argued to the Federal Circuit panel of Circuit Judges Pauline Newman, Haldane Robert Mayer and Alan Lourie. “[VerHoef] had the entire reduction to practice of the invention… she blurted out an idea, and he adopted it. That’s what happened here.” Although VerHoef agreed that Dr. Lamb did provide the suggestion, Loop argued that this suggestion did not elevate the veterinarian to the level of inventor.

The low allowance rates and nearly blanket eligibility-rejection issuance in the business-method art units is not without consequence. Beyond disincentivizing innovation, the examination of business-method applications is protracted as the workload at the PTAB is increased. Not only do these results affect the PTO’s operation of handling matters currently at issue, but it results in an unjust postponement of guidance. After the recent adjustments of the eligibility thresholds, examiners and applicants alike are awaiting more precedence to know what can be patent eligible in this space as new patent applications are filed. However, the PTAB has been slow to respond to business-method appeal briefs (surely due to the high volume of appeals), such that decisions are frequently issued at a time when the applicable case law has shifted relative to the filings of the correspond appeal briefs.

The PTO reports a case as affirmed if all claims are rejected for at least one issue on appeal and reversed if all claims are reversed for at least one ground of rejection. A case is only reported affirmed-in-part by the PTO’s statistics if at least one claim remains standing, regardless of which legal issue ((§101, §103, §112, etc.) the claim was originally rejected. Since a large portion of PTAB ex parte appeals involve rejections over more than one ground of rejection (between 35%-45% according to this statistical estimate), this reporting process masks what the PTAB is deciding on each legal issue presented to it. Because the USPTO data does not report the outcome of each legal issue in multiple issue cases, it is impossible to collect statistically meaningful data on outcomes of specific legal issues from the data set from the FOIA website.

As the old saying goes: Ignorance of the law is no excuse. So there seems to be no good reason that the Examining corps’ inability to apply the law to the facts in ex parte appeals should be costing applicants this much money yearly. We should not have 2X higher reversal rates for novelty and obviousness than statutory subject matter. However, until something changes about how the USPTO decides to take cases to the board, it is apparent that patent applicants will continue to have to be patient and pay.