USPTO Appeal Process: Appeal Strategies and New Rules Report to the AIPLA’s IP Practice in Japan Committee January 22, 2012 Presented by: Stephen S. Wentsler Pearne & Gordon LLP swentsler@pearne.com © AIPLA 2012

Typical Prosecution Flow Prosecution reopened File Patent Application Non-final Office action RCE Response to the non-final Office action Final Office action Allowance Prosecution closed © AIPLA 2012

Typical Prosecution Flow Final Office action Response after Final RCE Consider Appealing Advisory Action $930 Allowance Examiner Productive © AIPLA 2012

Typical Prosecution Flow $1,240 Notice of Appeal $ Appeal Brief $ Panel Meets Prosecution Reopened Examiner’s Answer Allowance © AIPLA 2012

Typical Prosecution Flow Notice of Appeal with Request for Pre-Appeal Brief Conference $620 $620 Written Panel Decision Proceed to Board Examiner NOT Productive $ Appeal Brief $ RCE Prosecution Reopened Allowance Examiner’s Answer © AIPLA 2012

Effective Date of the New Rules January 23, 2012 Applicability All appeals where the appeal brief is filed on or after January 23, 2012 © AIPLA 2012

Purposes for Rule Changes Lessen the burden on appellants and examiners Reduce time to transfer jurisdiction to the Board Reduce confusion as to which claims are on appeal © AIPLA 2012

Jurisdiction over Appeal Jurisdiction passes to the board upon the earlier of: filing of a reply brief; or expiration of the time to file the reply brief © AIPLA 2012

Jurisdiction over Appeal Board less likely to transfer jurisdiction until the decision of the Board is released Board will not transfer jurisdiction for: Consideration of information disclosure statement (untimely evidence) Consider a petition Petitions should be filed and decided before Appeal Exception – Petition under Part 41 of the Rules © AIPLA 2012

Contents of Appeal Brief Old Rules New Rules Real Party in interest may be required Related Appeals and Interferences Status of claims deleted Status of amendments Summary of claimed subject matter required Grounds of rejection to be reviewed on appeal Argument Claims Appendix Evidence Appendix Related proceedings appendix © AIPLA 2012

Real Party in Interest Not necessary if the RPI are the inventors at the time of appeal If omitted, the Office may assume that the named inventors are the RPI © AIPLA 2012

Related Appeals and Interferences Not necessary if there are no such related cases © AIPLA 2012

Related Appeals and Interferences Limits the required disclosure of related appeals and interferences to only those which: involve an application or patent owned by appellant or assignee; are known to appellant, the appellant’s legal representative, or assignee; and may be related to, directly affect or be directly affected by, or have a bearing on the Board’s decision © AIPLA 2012

Summary of Claimed Subject Matter Still required under the new Rules Applies to all the claim features in the “rejected independent claims” Also applies to any “means or step plus function” claim feature in dependent claims argued separately Cross reference claim features to the specification and drawings © AIPLA 2012

Argument Section Still required under the new Rules The Board may refuse to consider arguments not raised in the appeal brief except as provided in §41.41 (Reply Briefs), §41.47 (Oral Hearings), and §41.52 (Requests for Rehearings) Must now identify errors alleged to have been made by the examiner in each ground of rejection © AIPLA 2012

Argument Section Board will assume applicant seeking review of all claims under rejection Failing to argue claims may result in the Board affirming the rejections Cancel claims before appeal © AIPLA 2012

Claims Appendix Section Still required under the new Rules Clean copy of all pending claims on appeal © AIPLA 2012

The Examiner’s Answer © AIPLA 2012

Examiner’s Answer New grounds of rejection in the answer must be approved by the Director © AIPLA 2012

Petitioning the Examiner’s Answer Appellants may petition the Director to request review of an examiner’s failure to designate a rejection as a new ground of rejection Such petition must be filed within 2 months from entry of the answer The filing of a reply brief prior to a decision on the petition acts to withdraw the petition and maintain the appeal © AIPLA 2012

Reply Brief © AIPLA 2012

Reply Brief Board will only consider arguments in the reply brief that: Were already raised in the appeal brief; or Are made in response to arguments raised in the examiner’s answer © AIPLA 2012

Examiner’s Response to Reply Brief The examiner no longer must acknowledge receipt and entry of the reply brief The final rule no longer allows for supplemental examiner’s answers Jurisdiction transfers immediately to the Board upon filing the reply brief © AIPLA 2012

Thank you © AIPLA 2012