Autopilot or Advocate? Raising the Bar in Ex Parte Appeals at the USPTO

By Carlo Cotrone
August 10, 2020

“To make the most compelling patentability case for clients, practitioners should abandon the autopilot playbook for ex parte appeals. In its place, they should adopt a dynamic approach driven by strategic advocacy, borrowing heavily from the toolkit of litigators.”

https://depositphotos.com/245617824/stock-photo-man-sleeps-while-his-car.htmlDespite 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.

Appeals on Autopilot

Some practitioners employ an appeals playbook that reads something like this:

  1. Start by filling out the sections of an appeal brief template. After deciding which of the examiner’s rejections to appeal, find a template or repurpose an appeal brief from another application as a template. Then dive headfirst into preparation of the appeal brief, adding content to each section.
  2. Adhere rigidly to form. As per 37 CFR 41.37(c), an appeal brief must include, in the following order, these sections: real party in interest; related appeals, interferences, and trials; summary of claimed subject matter; argument; and claims appendix. Begin the appeal brief with boilerplate language referencing any final rejection, pre-appeal decision, extension of time, deposit account authorization, and the like. Then move directly to the real party in interest section. Take no liberties in adding contextual content to the brief.
  3. Copy and paste previously submitted arguments. For the argument section of the appeal brief, copy arguments from Office action responses preceding the appeal, paste them into your template, and make minimal revisions related to form, not substance.
  4. Submit the appeal brief when completely filled out. Once you’ve completed every section of your appeal brief, you’re ready to file it.
  5. Never request an oral hearing. To your knowledge, none of your colleagues requests oral hearings pursuant to 37 CFR 41.47. An oral hearing is always unnecessary, merely making an appeal more expensive. Also, you haven’t ever argued before an APJ or a district or appellate court judge and aren’t sure that you’d be up to the task.

This “autopilot playbook” offers a relatively quick and straightforward formula for handling appeals. For clients paying by the hour, it may reduce costs to appeal. And when a law firm and its client have an agreed fixed fee arrangement for appeals, it may enable the firm to get the work done as profitably as possible; profitability diminishes as more time is spent preparing the appeal.

Nevertheless, the autopilot playbook falls short in fundamental respects:

  • It doesn’t tailor appeals to a legal audience—the APJs of the PTAB. All APJs have a law degree and a conversance with legal principles, analysis, and argumentation. The same can’t be said for all patent examiners. Yet, some practitioners equate the groups for purposes of appeals. As a result, their message isn’t finely tuned for maximum persuasive impact.
  • It doesn’t educate the APJs. With its rigid adherence to form, the autopilot playbook is reticent to incorporate contextual information that can aid APJs in efficiently evaluating the merits. As such, APJs may need to spend inordinate time and effort getting their bearings.
  • It doesn’t seize the opportunity for a reset. The playbook assumes that previously submitted arguments were highly effective (though not persuasive to the examiner) and thus substantially recycles them for use in the appeal. A practitioner who doesn’t test this assumption can’t make appropriate course corrections at the appeals stage to improve his or her client’s prospects.
  • It doesn’t use all the available tools of advocacy. Oral hearings can be requested, when warranted, to further a client’s cause. Neglecting to consider the use of oral hearings and other tools of advocacy does clients a disservice.
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Appeals Built Upon Strategic Advocacy

To make the most compelling patentability case for clients, practitioners should abandon the autopilot playbook for ex parte appeals. In its place, they should adopt a dynamic approach driven by strategic advocacy, borrowing heavily from the toolkit of litigators. Suggested best practices include:

  1. Strategize before you start drafting.

Instead of reaching reflexively for a template, first conduct a de novo assessment of the patent application’s prosecution history to date. This includes a review of the rejected claims, the examiner’s grounds of rejection, the cited references, your arguments and view of the merits, and how the case has evolved over the course of prosecution.

A fresh, critical look at these aspects—including strengths and weaknesses on both the examiner’s and your part—can help you strategize how to pitch your appeal most effectively.

Attorneys and agents who, without reflection, simply recycle old material in briefs basically treat the appeals process like filing a Request for Continued Examination (RCE) to enter a previously filed response; the client is paying for additional USPTO review of old material. In so doing, they may not be fully exploiting opportunities presented by the appeals forum.

  1. Write primarily for the APJs, not the patent examiner.

Appeal briefs should be intentionally crafted to take advantage of the APJs’ typically stronger command of legal matters, and their experiences and perspectives as arbiters of rejections spanning countless examiners and applicants.

With APJs as your intended primary audience, you’ll have latitude to present a more nuanced and fulsome challenge to the examiner’s rejections—one that encompasses both legal and technical facets.

  1. Help the APJs get up to speed.

Appeal briefs should concisely orient the APJs to events occurring during prosecution, the technology at issue, and other relevant contextual details.

For instance, providing a short primer on the technology, including its real-world impact and importance, can aid the APJs’ ability to dig into details, while enlivening what otherwise might seem to be dry technical subject matter. Such a primer can be inserted within or before the summary of claimed subject matter section of the brief.

Use of drawings, tables, or other visual devices, including pertinent annotations, also can help the APJs navigate concepts germane to the appeal.

Additionally, it may be appropriate to tactfully characterize, at a high level, the examiner’s actions during prosecution that are believed to have been stumbling blocks to receiving an allowance. Examples include (1) a pattern of conceding applicant arguments and then citing references no better than those previously cited, (2) fundamentally misunderstanding aspects of technology or references, and (3) fashioning obviousness rejections using many disparate references. Tactfully calling out the examiner’s conduct in a thematic manner can tell your client’s side of the story, while framing detailed arguments.

  1. Tighten up your best arguments, reinvigorate or jettison the weak ones.

Perfunctory regurgitation of old arguments isn’t strategic advocacy.

The appeals stage offers a prime vehicle for you to refine arguments in your client’s favor. Even strong arguments can be tweaked so as to leave nothing to chance. Weaker arguments should be shored up or entirely discarded; otherwise, they may dilute stronger arguments and imperil the entire appeal.

  1. Include a thoughtfully constructed introduction.

In the litigation world, it’s standard, unassailable practice to begin a brief with an introduction. An executive summary for the court, it provides context, summarizes the arguments to be presented, and generally sets the stage for what follows. It may even include a bit of storytelling and take artistic license to pique the court’s interest.

There’s a pragmatic reason for thoughtfully crafting an introduction: A highly effective introduction can contribute to the persuasive power of the brief.

Appeal briefs in ex parte appeals at the USPTO should be no different—they should include an introduction. Moreover, inclusion of an introduction won’t precipitate a notice of non-compliant appeal brief if the brief meets the requirements of 37 CFR 41.37.

Practitioners who decline to utilize introductions undermine their clients’ interests from square one. The absence of a meaningful introduction leaves to chance the APJs’ collective frame of reference for beginning their review of the merits. It allows—and forces—the APJs to sift through detailed material without a broad, applicant-friendly roadmap.

  1. Consider requesting an oral hearing.

An adjunct to appeal briefs, oral hearings are available to patent applicants when considered “necessary or desirable for a proper presentation of the appeal.” 37 CFR 41.47.

When developing a strategy, a practitioner should consider whether the appeal could benefit from an oral hearing. It may be that the criticality of patent protection to the client, or the nature of issues presented, warrant requesting an oral hearing. Failing to at least consider the potential value of an oral hearing deprives your client of an available tool of advocacy that could help carry the day.

An attorney or agent’s inexperience with oral hearings shouldn’t deter him or her from incorporating them into future appeal strategies. Preparing for and participating in an oral hearing not only can further client interests, but also enables a practitioner to cultivate valuable skills that can be leveraged going forward.

  1. Make use of the USPTO’s helpful tips.

On its website, the USPTO has compiled useful guidance related to the appeals process, preparing appeal briefs, and requesting and presenting at oral hearings. These resources can help practitioners get the most out of appeals for their clients’ sake.

  1. Explain your value proposition to clients and price appeals-related services accordingly.

Law firm pricing for handling appeals often is subject to client-mandated fixed fee schedules for patent prosecution. The pressure to minimize fees arguably incentivizes practitioners to fall back on the autopilot playbook; within a tight budget, they feel they only can devote limited time to the task at hand.

Nonetheless, it’s incumbent upon practitioners to educate clients on what it takes to fully capitalize on the appeals process, and then to propose pricing consistent with the work required.

Conversely, clients should demand that practitioners approach appeals through the prism of strategic advocacy. And they should be willing to pay fees commensurate with the value being delivered.

Strategic Advocacy

A client’s decision to pursue an ex parte appeal at the USPTO opens a door of opportunity: a practitioner can aggressively argue the client’s patentability case before a new forum, the PTAB. Strategic advocacy—not rote execution of the autopilot playbook—is the singular paradigm for meeting that opportunity. It’s how IP counselors tackle appeals.

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The Author

Carlo Cotrone

Carlo Cotrone is Chief Patent Counsel at Techtronic Industries North America (TTI), a world leader in cordless technology spanning power tools, outdoor power equipment, and floor care appliances. He also is Adjunct Professor of Law at University of Houston Law Center, and a frequent speaker and author on topics such as IP strategy and asset management, legal ethics, collaboration and innovation strategies for law firms and corporate legal departments, and professional development. Previously, Carlo served as Senior IP Counsel at General Electric and energy technology company Baker Hughes, and practiced law at firms on the East Coast and in the Midwest, most recently as a partner. He is the inventor of two United States patents directed to digital sheet music technology.

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 and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 24 Comments comments. Join the discussion.

  1. AAA JJ August 10, 2020 10:13 am

    The most important thing to do in an ex parte appeal brief is: Get.To.The.Point.

    Tell the Board as soon as possible what the error in the rejection(s) is (are). That’s what they are looking for. The pages and pages of case law summary and the endless “story telling” are a complete and total waste of time and effort.

    “The rejection is improper because…”

    “The error in the rejection is…”

    I read a lot of Board decisions where they chastise Applicant for not addressing the rejection. I call this the “putting on our case of patentability” fallacy. The examiner concludes “It would have been obvious to combine Reference A and Reference B for reason X.” Applicant responds, “It would not have been obvious to combine Reference A and Reference B for reason Y.” The Board affirms that rejection 100% of the time. Because it doesn’t address the rejection.

    Get.To.The.Point.

    “The error in the rejection is…”

    “The rejection is improper because…”

    I’ve seen more than a few panels of APJ’s speak on ex parte appeals and they all said that oral hearings are useful in less than 10% of the cases. Unless the application is very important, or there is an issue that just can’t be effectively argued in the brief, oral hearings offer little value to the client.

    BTW, the same advice applies to replies to OA’s. No “story telling.” No case law summaries. Get.To.The.Point. Quote the rejection, or the applicable portion of the rejection, and explain to the examiner what the error is. If you do that clearly there is no need to rethink your arguments for the brief and the Board.

  2. Biglaw Expat August 10, 2020 11:22 am

    There are some good points in this article. Here are some recurring problems I see in ex parte briefs:

    -Makes the judges hunt to figure out what precisely is the claim limitation at issue. Consider quoting the limitation you are arguing early on; quoting the limitation at issue in a heading is even better.

    -Argues the 103 references individually, e.g., the Examiner cites reference A for limitation 1 and reference B for limitation 2, and Appellant argues reference A does not teach limitation 2. This sounds impossible to do, but it is probably the most common 103 argument error I see.

    -Addresses only a portion of the Examiner’s argument. E.g., the Examiner cites paragraphs 10-20 of the reference against the limitation, and Appellant only argues paragraph 10 doesn’t teach it.

    -Quoting the law. Unless you’re analogizing the facts of a case to your specific facts, your generic boilerplate 103/101 sections never get read. They’re just annoying because they waste time getting to the point.

    -Extremely difficult technology with no introduction whatsoever to that technology.

    -Conclusory arguments.

    -Failing to address the Answer’s change of tack in the Reply Brief. Arguments not made are waived.

    -Referring to prior Office Actions, assuming the judges must have read them. Nope. Your brief should be self-contained and focus on the last rejection.

  3. Just some thoughts August 10, 2020 11:56 am

    Agree with the above comment – get to the point in your appeals or OA responses. Most responses/appeals can be summarized in a single, simple sentence. For example, “the X of Ref_1 does not constitute a Y as recited in the claims because . . . ” or “one of skill in the art would not have been motivated to combine X teaching of Ref_1 with Y teaching of Ref_2 because . . .” There may be some more explanation required, but the core of the argument should be right at the front of the appeal/response and should be clear.

    And, yeah, having the law and other boilerplate may be important, but it should not be frontloaded – that just hides the actual argument. LEAD with the key argument, then backfill with boilerplate if needed.

    Also can confirm (anecdotally) the uselessness of oral hearings – they don’t speed up your appeal, and the decision will be 100% on the written record, likely decided (even written up, just not mailed) before the oral hearing takes place.

    *Standard disclaimer – these are not the opinions of any agency/firm/etc., this is not legal advice, seek competent counsel, etc.*

  4. ipguy August 11, 2020 3:13 am

    It’s been years since I’ve had to write an appeal brief. However, the next time I need to, I’ve considered including citations to PTAB decisions where the Examiner I’m appealing has been reversed by the PTAB on issues that are the same as or similar to the issues I’m dealing with. For example, the PTAB reversals show the Examiner has a history of failing to provide reasoning with a rational underpinning to support obviousness rejections and that’s exactly what he failed to do in the case you’re appealing. The USPTO doesn’t make it easy to find those cases since you can’t search PTAB decisions on the USPTO website by Examiner name, but they are out there. I’ve found that a PTAB reversal of an Examiner can also be useful during regular prosecution.

  5. Anon August 11, 2020 7:15 am

    ipguy,

    Are you aware that the USPTO now makes available the records of individual examiners (albeit not in the most friendly data crunching manner)?

    These records may be more directly on point than trying to sift through the PTAB records (which is would suggest would also be much better if indeed prepared for public consumption).

  6. ipguy August 11, 2020 1:03 pm

    I’ve seen websites (which I won’t mention here) that crunch the numbers of individual Examiners and present charts and graphs, but I wasn’t aware the USPTO was making individual examiner data available.

  7. IP of 38+ years August 11, 2020 2:26 pm

    Reading the article, the points are valid.

    HOWEVER, one aspect that author does not appear to truly realize is the brief MUST be BRIEF. This brevity is due to several considerations:

    1. The PTAB does not care any more than Examiners do about case law–the Board has its own “set” of case law to rebut almost every position that could be taken in a Brief. Keep the brief BRIEF, and get to the errors.
    2. Clearly and specifically state ERRORS in the rejection, not that the art does not teach, suggest, or disclose the claimed features. Load your first and second reasons for the errors, and avoid the next 3-5 reasons why the rejection is not correct. If 1 and 2 fail, the Board will not give you a participation reversal since you tried so hard in writing the Brief.
    3. Oral hearing not worth the cost–while you get to tell your story, the Board members have already made up their minds. This hearing is not Law & Order where you argue with the Examiner, you merely state your position, Examiners do not attend to these, as they already have their “count” and nothing more is gained. The Board is merely accepting client moneys to virtually attend, and the decision is in all probabilities all ready made. If your Brief is good, why spend that money.
    4. Money/cash is important–as the author knows from his GE days, most companies-especially GE– are working fixed fee arrangements (often requesting additional discounts) where $X is paid for an Appeal, and oral hearings are only approved in extreme cases. I would like to know how many Briefs the author drafted, authorized, and what percentage of those did he ask the outside counsel to do an oral hearing or even approve one if asked.
    5. Relationship with an Examiner will avoid appeals. As a former Primary Examiner for 12+ years, I drafted over 200 Answers — a majority of them where the counsel and I agreed that the rejection had merit and a neutral party would be best to mediate and decide. I will estimate that there were a similar number where Counsel called me (or those Examiners under my guidance) and we worked the issues through to allowable terms, given the desire to avoid unnecessary fees for their client. A short interview and Exm Amendment is far less expensive than an appeal. While your partners at a firm may be happy with higher billing, as I managed IP for a large international conglomerate- the firm that saved me money from avoiding appeals with their delays in obtaining rights (or suggestion no further action) were the firms that I went back to time and time again. They also realized much more work, as they were in tune with my strategy.

  8. Anon August 11, 2020 3:54 pm

    ipguy,

    One of those websites (I think we may be thinking of the same one), was pretty good, but often suffered a time lag, which was sometimes overpowering, given the flux of law (especially in 101).

    That being said, the USPTO data offering is substantial, although the necessary post download crunching makes it worthwhile for a smaller selection of cases.

    By the way – really appreciated the dialogue that you and AAA JJ engaged in on a thread that is now five layers deep.

  9. ipguy August 11, 2020 7:06 pm

    @8
    Thank you, Anon.
    I’m still not sure about the utility of examiner statistics. I’m not discounting them, but there’s more than just statistics in dealing with an Examiner. My philosophy is that patent prosecution can as much about psychology as technology. As a former examiner, I’ve been in the shoes of someone having to meet production goals, rejecting claims in an application that has allowable subject matter but it’s not making its way into the claims, Count Mondays, End of Quarter, End of Fiscal Year, etc. When I was an Assistant Examiner, I had the benefit of a pro-allowance USPTO Management, and I had a great SPE who taught me that quality of work was just as important as quantity (but that I still darn well better meet at least 100% production every bi-week). After I left the USPTO, and a new administration came into office, there seemed to be a change in philosophy where the USPTO became the Patent Rejection Office, and there were 8 years of new Examiners who were trained under that philosophy. In my opinion, those new Examiners eventually went on to become Primaries and SPEs who still have that reject-at-all-costs philosophy, despite any change at the top of USPTO Management.
    I agree with “IP of 38+ years” point #5 about establishing a relationship with the Examiner, especially if that relationship is with a Primary Examiner. I don’t know what Examiners are being taught these days about dealing with attorneys/agents but I’ve felt a perceptible low-key hostility towards attorneys/agents. One of the first things I try to do is establish some rapport with the Examiner by letting them know that I’m a former Examiner myself. Sometimes, you can almost feel an easing of the tension from them after I do that. That doesn’t mean they just roll over, but they know they’re dealing with someone who has a measure of respect for the work they do. As I said, psychology as much as technology.

    Yes, it was a good discussion with AAA JJ, and I enjoyed hearing AAA JJ’s perspective. I’m glad you appreciated the discussion and I’m happy to continue the discussion if you have any questions or comments.

  10. Name withheld to protect the innocent August 11, 2020 11:23 pm

    I could write ten thousand words on writing appeals to the Board. However, I’ll just address some things that I think the advice given by the author isn’t quite right.
    Write primarily for the APJs, not the patent examiner.
    This is probably the biggest mistake. A good appeal never gets to the Board. Your best chance at a positive result is not the 3 person panel at the Board but convincing the 3 people (well, just 2) at the appeal conference. Also, if you have any thought that this might be something you’ll take to the Federal Circuit, then you need to write for them and consider their standard of review.

    For instance, providing a short primer on the technology, including its real-world impact and importance, can aid the APJs’ ability to dig into details, while enlivening what otherwise might seem to be dry technical subject matter.
    Never seen this help. Just get to your arguments — show Examiner error.

    Some general tips as to what works and doesn’t work.
    Recognize when the Examiner’s error in characterizing the teachings of a reference is really a claim construction issue and make sure your claim construction is rock solid. The Board loves to rewrite claim limitations and will bend over backwards to agree with whatever claim construction the Examiner (belatedly) sets forth.

    If you have a choice between appealing a (bad) 102 rejection or making a “clarifying” amendment (with a RCE) that you suspect the Examiner will convert into an equally bad 103 rejection, then appeal the 102 rejection. The Board has so many tricks to ignore arguments regarding 103 rejections that it is almost always better to go to the Board on a 102 rejection.

    Assume that the Board will screw you over. The Board is not Lady Justice who is indifferent as to who wins or loses. Ever since the Dudas era, the Board has been very anti-applicant. There are a number of APJs who are absolutely terrible.

    One last thing, if you ever want to experience the worst recitations of facts/law at the USPTO, file a Request for Rehearing on something the Board absolutely screwed up on. I’ve never seen worse arguments and misrepresentations than in Decisions on Request for Rehearing. The Board knows that the likelihood of you going to the Federal Circuit is minimal so they really don’t care what they write or how bad it seems.

  11. J. Doerre August 12, 2020 1:05 pm

    I want to second and emphasize AAA JJ’s recommendation to “[t]ell the Board … what the error in the rejection” is, as “[t]hat’s what they are looking for.” AAA JJ, comment 1 (August 10, 2020 10:13 am).

    In this regard, I think it can also be useful to help the Board by pointing out and emphasizing the appropriate standard of review and standard of proof, and explaining why those standards warrant reversal.

    This is standard practice in any appellate matter at any appellate court. Articulating the standard of review and explaining why you believe it requires a certain result can be very helpful to administrative patent judges, many of whom are former examiners and former district court litigators who may not have much experience with administrative law or appellate litigation.

    In particular, the Board has suggested that it reviews examiner findings and conclusions de novo, indicating in a precedential decision that “the Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue.” Ex parte Frye, appeal no. 2009-006013, slip op. at 10 (PTAB Feb. 26, 2010) (precedential) (emphasis added).

    Further, with respect to the standard of proof for rejections in a patent application, “preponderance of the evidence is the standard that must be met by the PTO in making rejections.” In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985). With respect to the burden of persuasion for a rejection, “[t]he examiner, and if later involved, the Board, retain the ultimate burden of persuasion on the issue.” In re Oetiker, 977 F.2d 1443, 1449 (Fed. Cir. 1992) (Plager, J., concurring).

    Thus, although the examiner may be the original trier of fact and law, there is no room for deference to the original trier of fact and law in the Board’s de novo analysis. Instead, for purposes of “review[ing] the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue,” Frye, slip op. at 10, the examiner is simply a party with the burden of persuasion who must make out a rejection supported by a preponderance of the evidence.

  12. AAA JJ August 12, 2020 1:44 pm

    Good advice from J. Doerre. It’s also a good idea to point out to the APJ’s that bald assertions from examiners without citation to/support of any evidence are not facts. As has been noted by others, and by myself at times, the APJ’s are not unbiased. They have marching orders to “affirm at all costs” whenever possible. Anybody who tells you differently is either not paying attention or lying.

  13. ipguy August 12, 2020 2:22 pm

    “It’s also a good idea to point out to the APJ’s that bald assertions from examiners without citation to/support of any evidence are not facts”
    Bald assertions by the Examiner are acceptable to the PTAB. For example, the Examiner makes a conclusory statement about what a person of ordinary skill in the art would know, the Applicant asserts that no skill level determination was made, and the PTAB says that the references themselves define the level of ordinary skill in the art and the Applicant hasn’t shown how an explicit determination of ordinary skill would have changed the conclusion of obviousness. Nevermind the fact that Examiners aren’t trained to perform any type of ordinary skill determination analysis and couldn’t state the level of ordinary skill explicitly if their lives depended on it. APJs are biased. There is no denying that. It’s a reflection of USPTO policy. If the Director wants a PTAB panel to come in with a particular result, the Director is free to stack the panel in favor of the desired outcome.

  14. Biglaw Expat August 13, 2020 8:21 am

    It’s frustrating to hear that people believe APJ’s have “marching orders to affirm at all costs.” As an APJ, I have heard no such thing.

    Do I affirm more often than I reverse? Yes. Why? Because many Appellant briefs are unpersuasive. See my post above on common errors. 101 is another story–the law is tough right now for patentees.

  15. AAA JJ August 13, 2020 10:58 am

    I believe it because a former APJ told me that directly.

  16. Biglaw Expat August 13, 2020 12:33 pm

    Prior administrations may have been different in that regard.

  17. ipguy August 13, 2020 1:43 pm

    @14 In your prior post (#2), you did not identify yourself as an APJ. I’m surprised USPTO policy allows you to comment. On the now-defunct Greedy IP comment board, one long-time contributor informed us that he got a job as an APJ and told us he could no longer comment due to USPTO policy. I guess policy must have changed.
    I’m sure there are some very badly drafted briefs, just as there are some very badly drafted patent applications (which I saw as an Examiner and in private practice when I’ve “inherited” a case from another attorney). However, when you read a number of PTAB decisions where the Examiner is completely reversed but you see the PTAB panel making its own “new rejections” (101, 112, 103), one gets the impression (rightly or wrongly) the PTAB panels were more on the USPTO’s side than being an objective and unbiased arbiter. The PTAB has the “appearance” of bias.

  18. Name withheld to protect the innocent August 13, 2020 1:58 pm

    It’s frustrating to hear that people believe APJ’s have “marching orders to affirm at all costs.” As an APJ, I have heard no such thing.
    LOL. You may be one that takes your job seriously. However, the absolute butchering of the law/facts that I’ve seen over my many years seeing the Board’s handiwork leads me to believe that the Board is not even-handed. Here is the (complete affirmance rate) by Fiscal Year over the years:
    2020: 59.9%
    2019: 58.4%
    2018: 59.8%
    2017: 56.4%
    2016: 57.4%
    2015: 56.9%
    2014: 53.6%
    2013: 53.8%
    2012: 49.3%
    2011: 47.8%
    2010: 48.8%
    2009: 52.1%
    2008: 56.5%
    2007: 55.3%
    2006: 43.7%
    2005: 38.2%
    2004: 37.1%
    2003: 36.7%
    2002: 29.9%
    2001: 30.1%
    2000: 29.2%
    1999: 28.6%
    1998: 35.6%

    From 1998-2001, there was a significant percentage of appeals being remanded (that ended in FY2002). The partial affirmance/reversal rate has always hovered around 10% plus or minus a couple percentage points. As can be seen from these numbers, either the patent bar has gotten significantly worse in writing appeals or Examiners have gotten significantly better. If you talk to any long-timer, the quality of examination has gone down — not up.

    As I mentioned above, Jon Dudas was about as anti-patent as one gets. He started in July of 2004 and his term ended in January of 2009. Over that time, you can see the significant jump in appeals being affirmed. David Kappos was definitely more pro-patent and the appeal affirmance rate dropped a bit. However, we then got Michelle Lee, who like Dudas, was about as anti-patent as one gets and things started to get worse again.

    There used to be a website you can look at the affirmance rates of individual APJs. Ideally, they should vary (in rankings) from year to year and they should all be fairly close to the average. In reality, you could find the same APJs, year after year, topping the list of affirmances — and when you read their work you can easily see why. They were awful.

  19. Name withheld to protect the innocent August 13, 2020 2:32 pm

    Argues the 103 references individually, e.g., the Examiner cites reference A for limitation 1 and reference B for limitation 2, and Appellant argues reference A does not teach limitation 2. This sounds impossible to do, but it is probably the most common 103 argument error I see.
    That is not what I see. I see a limitation “perform 1 based upon 2.” The Examiner cited A for limitation 1 (admits that limitation 2 is not disclosed) and relies upon reference B for limitation 2. I argue that reference B does not teach limitation 2. The Board (mis) cites Keller and Merck and says that I haven’t argued the combination. Well … duh. The Examiner didn’t rely upon the combination to teach limitation 2. The Examiner ADMITTED that limitation 2 is not disclosed by reference A. I’ve seen this (il)logic employed over and over and over again.
    Addresses only a portion of the Examiner’s argument. E.g., the Examiner cites paragraphs 10-20 of the reference against the limitation, and Appellant only argues paragraph 10 doesn’t teach it.
    You mean the Examiner presents the naked citation (following a limitation containing several different elements interacting with one another) of “see paragraphs 10-20” without anything else (oftentimes in the Summary of the Invention). Appellant refers to paragraph 10 because that is the only paragraph that appears to be even somewhat relevant as paragraphs 11-20 aren’t even close to what is being claimed and the Examiner never explains their relevance. I file a Request for Rehearing asking the Board to tell me where in paragraphs 11-20 this limitation is found – they don’t point it out (because they cannot find it either) and argue that I haven’t shown “examiner error” – ignoring that the Examiner has the burden of proof. I cannot prove something doesn’t exist. If the Examiner actually presented a specific citation (as opposed to citing several hundred words of text) or presented some accompanying I could make an argument.

    Quoting the law. Unless you’re analogizing the facts of a case to your specific facts, your generic boilerplate 103/101 sections never get read. They’re just annoying because they waste time getting to the point.
    You mean like the continual misrepresentation of
    Keller, Merck, Leapfrog, and Lowry by the Board? Never seen case law more misrepresented (outside of a 101 context) than those cases.

    Extremely difficult technology with no introduction whatsoever to that technology.
    If you cannot understand the technology, then you shouldn’t be working with it. It sucks when you pick up a new application and your brain hurts after reading the specification. However, that is just part of the job.

    -Failing to address the Answer’s change of tack in the Reply Brief. Arguments not made are waived.
    You mean the undesignated new grounds of rejection presented by the Examiner? Admittedly, there are some attorneys who think an Appeal Brief is all that is needed. I am not one of those. Examiner’s frequently change their mind as to what teachings they are relying upon (or present claim constructions for the first time) after they realize the substantial deficiencies in their initial analysis. Oh, and while I’m thinking of it, you guys do realize that when realize that the Examiner’s analysis is deficient and start filling in all of the missing gaps, that you should be designating your own decisions as new grounds of rejections? I’ve never seen the Board step in to aid an applicant with a new argument (i.e., your “Arguments not made are waived”) but the Board helps out Examiners ALL THE TIME. I see claim constructions that were never made by the Examiner. I see citations to portions of the prior art never made by the Examiner. I see legal rationales never presented by the Examiner. None of which are designated as new grounds of rejection.

    With all this being said, I won’t disagree that there are some lousy appeal briefs being filed. From time to time we get applications transferred mid-prosecution and I’ve had to deal with many of them after the Board has affirmed the Examiner. In many instances, I’m reading page after page of the appeal brief not knowing what the alleged Examiner error even is. It is a random discussion of the claimed invention as a whole and the prior art as a whole. Get to the point. The claim recites limitation 2. The Examiner relied upon Reference B to teach limitation 2, but reference B does not teach limitation 2 for these reasons. Elaborate. Rinse and repeat for each additional Examiner error.

  20. AAA JJ August 13, 2020 7:14 pm

    What he said.

  21. KenF August 14, 2020 10:58 am

    A lot of good points in the article and in the comments.

    In re point 1 in the article (Strategizing: “A fresh, critical look at these aspects—including strengths and weaknesses on both the examiner’s and your part—can help you strategize how to pitch your appeal most effectively.”), I would take it a step further. It can also show you whether you should stop the appeals process altogether and get better results by filing RCE/amending to put a sharper point on the claims and, at the same time, negate a so-called broadest-reasonable-interpretation position the examiner has taken. Far faster results, and far better chances than the crap-shoot appeals process. In my view, appeal should only be used where you are at a complete impasse, e.g., over a matter of opinion.

    Might also use the RCE “reset” to submit declaration to bolster your arguments because, as noted above, I think the Board is inclined to affirm the examiner, even if the examiner’s position is unsupported. That is based on lesson learned the hard way….

  22. AAA JJ August 17, 2020 12:22 pm

    A fun exercise would be to find all the APJ’s who like to quote the “jigsaw puzzle” language from KSR and give them the applied references, but not the application, and tell them to fit the references together like the pieces of a jigsaw puzzle to arrive at the claimed invention(s). How many do you think could actually do it? (Hint: I’m thinking of a big round number.)

  23. ipguy August 18, 2020 6:46 pm

    @22
    Well said.

  24. KenF August 19, 2020 12:58 pm

    @22 I’ve got a thousand bucks for first person to try it…..

    (J/K)

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