What the Board of Patent Appeals Can Learn from the NFL

By Scott A. McKeown
December 20, 2009

The difference between a successful and unsuccessful season for an NFL Football Team often times hinges upon the outcome of a single game. In some cases, a single play of a game can doom a team’s season or even a coaching/playing career. Due to the heightened importance of games in the NFL, indeed, the importance of every play, instant replay is utilized more often in this sport than in any other.

Instant replay is employed as a supervisory review mechanism, aided by video technology, to challenge referee decisions made during an NFL game. For example, if a referee mistakenly decides that a player has fumbled the football, the coach of the allegedly fumbling team can request a short conference whereby the deciding referee confers with other game officials on the decision, in view of video evidence (i.e., instant replay). In order to overturn the decision there must be clear visual evidence of a mistake.

Once the review conference is concluded, the referee turns on his microphone and addresses the requesting coach and fans as to the review determination. In every case, whether upholding or reversing a referee decision, the rationale arrived at by the conferees is communicated.

For example, if the decision is upheld the referee will provide an explanation such as “upon further review, the player lost possession of the football prior to his knee touching the ground, therefore the ball was fumbled and the play stands as called.” Likewise, if the play is overturned, the referee will provide an explanation such as “upon further review the player’s knee touched the ground prior to the ball coming loose, since the ground cannot cause a fumble, the play is reversed.”

The explanation of the review conference is of paramount importance as it provides guidance to the coaches and fans on the rules, referee interpretation methodology, standard of proof, etc. Based upon this repeated reinforcement, fans are better able to understand the game, the rules, and the referee perspective. As a result, coaches are less likely to request a replay unless they are fairly certain as to the correctness of their position based on past challenges.

So what does any of this have to do with the USPTO?

Well, imagine another fumble call being made on the field by an NFL referee. Now, after the conference, imagine the referee walking to the center of the field turning on his microphone and stating “after further review, we were right” This is the level of feedback currently provided in unfavorable Pre-Appeal Brief Conference Request determinations.

In 2005, the Pre-Appeal Conference Request was introduced as a pilot program to provide an appeal conference prior to instituting a full BPAI appeal process. Previously, the conference was only held after an Applicant filed a complete appeal brief. The rationale behind the Pre-Appeal Conference Request was to enable a quick supervisory review of Final Rejections (45 day turnaround), remove clear PTO mistakes or “PTO losers” (i.e., cases the Examiner would lose at the BPAI) from the appeal docket, and to save Applicant resources by avoiding the filing of complete appeal briefs.

Since 2005, the affirmance rate at the BPAI has increased significantly. While some may identify KSR as a factor in this trend, certainly the filtering of clear PTO losers from the appeal docket has also impacted the affirmance rate. In this regard, the Conference Request program has been quite successful.

But what about cases the Examiner will win at the BPAI, “PTO winners?”

Currently, Chief Judge Fleming is grappling with the growing backlog of pending BPAI appeals. In view of the NFL practice, perhaps, a helpful tool in controlling growth of the backlog would be to provide an explanation after an unfavorable conference determination. Of course, some cases will proceed to the BPAI, presenting “close call” determinations, while still others may have no other prosecution options. Yet, surely there are clear PTO winners on the docket that would benefit from further prosecution. For these cases, how can the BPAI help clear their docket of these cases and, in the process, open the eyes of Applicants in such circumstances?

In many cases, especially those that have not been interviewed, the dispute between the Examiner and Applicant may just be a lack of appreciation of the other’s position. Often times, an Examiner will be thinking one thing, but the rejection does not adequately express the true rationale; to be sure, attorneys are just as capable of misunderstanding the Examiner’s true position. Yet, in an unfavorable Conference Decision, the Applicant receives only a form response having a single box checked noting, “Proceed to Board of Patent Appeals & Interferences.”

Currently, “Proceed to the Board” may be viewed as a rubber stamp by the jaded among us, if not an outright challenge. In view of the appeal backlog, advancement to the Board should not be encouraged in this manner. As in the NFL, if the conferees determine the original decision to be correct, they should briefly explain why. In order to purge the appeal docket of clear PTO winners, an NFL style explanation, by a participating conferee may yield significant benefit.

For example, a conferring Examiner that is not in charge of the examination could provide a brief statement. The statement would ideally explain the upheld decision in a different light (i.e., not a cut-and-paste) than that provided by the responsible Examiner. Such an explanation could be limited in length, akin to the typical Advisory Action feedback. Interestingly, Under Secretary Kappos has proposed a new ombudsman position for art units, this type of feedback may be ideal for such a trouble shooter to facilitate.

Moreover, as the Office appears to be grappling with significant budgetary constraints, why not expand the Conference Request Program to allow for Applicant participation? The Office could require an additional fee for such participation. Such a conference interview mechanism is not unprecedented. The Central Reexamination Unit conducts all interviews with a three examiner panel in ex parte reexaminations.

In short, when receiving a favorable determination in a Pre-appeal Conference, the decision may be reversed for a completely different reason than that identified by the arguing practitioner. In such cases, the only feedback provided is a box that is checked indicating “Reopen Prosecution” or “Allowed.” An explanation of the reversal is valuable guidance. Absent such an explanation, when the practitioner presents the same, “winning argument” in the next Request, and that argument is not accepted, the Office appears to be frustratingly inconsistent and a full appeal typically follows.

Likewise, when receiving an unfavorable determination, practitioners should be educated as to the rationale. This important, early feedback will enable a practitioner to better assess the impact of misconceptions and/or miscommunications on their appeal position, serving to dissuade some of the clear PTO winners from advancing to the Board. It is this continuous reinforcement that will serve to lessen the appeal backlog and instruct practitioners as to the realities of the game.

The Author

Scott A. McKeown

Scott A. McKeown is a partner with Oblon, McClelland, Maier & Neustadt, L.L.P. He is a member of the firm's Management Committee, and co-chairs the Post-Grant Patent practice group focusing on post-grant counseling, litigation and related prosecution issues. He leads the Post-Grant Patent team responsible for electronics, wireless communications, software and computer-related inventions and business methods.

Mr. McKeown handles all aspects of post-issuance patent proceedings at the United States Patent and Trademark Office (USPTO). He specializes in administrative trials before the Patent Trial & Appeal Board (PTAB) as well as appeals to the Court of Appeals for the Federal Circuit (CAFC).

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 10 Comments comments.

  1. Michael December 20, 2009 7:35 pm

    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.

  2. Jason December 20, 2009 7:47 pm

    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.

  3. JNG December 20, 2009 8:03 pm

    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.

  4. EG December 21, 2009 8:36 am

    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?

  5. Randall Morin December 21, 2009 9:35 am

    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).

  6. Scott December 21, 2009 11:26 am

    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.

  7. JNG December 21, 2009 12:32 pm

    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.

  8. step back December 21, 2009 9:17 pm

    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.