The Other 66 Percent: Appeals Before the PTAB

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Presentation transcript:

The Other 66 Percent: Appeals Before the PTAB Best practices in appeals from ex parte examination, reexaminations, and interferences Judge Ken Barrett, Lead Administrative Patent Judge, PTAB, U.S. Patent and Trademark Office, Judge Michael Kim, Lead Administrative Patent Judge PTAB, Lissi Mojica, Brooks Kushman Michael Messinger, Sterne Kessler Goldstein Fox Moderator: Marc Richards, Brinks Gilson & Lione Initial Draft - Not For Distribution

TOPICS PTAB ex parte Appeals: Operations and Statistics Do’s and Don’ts on Appeal Briefs Oral Hearing and Demonstrative Evidence Appeals Practice: Increase efficiency and effectiveness Precedential Decisions Stakeholder Questions and Input

USPTO – Appeal and Interference Statistics 1/31/2017 Source: USPTO

USPTO – Appeal and Interference Statistics 1/31/2017 Source: USPTO

USPTO – Appeal and Interference Statistics 1/31/2017 Source: USPTO

USPTO – Appeal and Interference Statistics 1/31/2017 Source: USPTO

USPTO – Appeal and Interference Statistics 1/31/2017 Source: USPTO

USPTO – Appeal and Interference Statistics 1/31/2017 Source: USPTO

Source: USPTO

Practice Tips for Appeal Briefs Present only the strongest arguments. Strategically group claims to highlight the strongest arguments in the case. Develop the facts of your case to show how the law applies to achieve the result being sought. Understand the burden of proof. Define key claim terms. Support arguments with evidence. Understand the difference between appealable and petitionable issues. Use Summary of Claimed Subject Matter to support your appeal. Source: USPTO

Practice Tips for Reply Briefs Use reply briefs to respond to points raised in the Examiner's Answer: Do not reiterate arguments presented in appeal brief. Do not raise new arguments in a reply brief that are not responsive to arguments made in the examiner’s answer. Do not separately argue claims for the first time in a reply brief. Source: USPTO

Practice Tips for Requests for Rehearing File requests for rehearing only when appropriate Do not simply re-argue the points raised in the briefs. Identify particular points of error by the Board. Strategically limit arguments to only one or two assertions of error, and refer to the specific portions of the Board’s opinion where the errors can be found. Source: USPTO

Appeals – PTAB Decision Process Source: USPTO

Practice Tips for Oral Hearing Answer the question being asked. Begin the conversation with the critical issues, not extensive background information. Consider whether demonstrative exhibits will be useful to your presentation. Do not avoid the difficult issues. Ensure that you are familiar with the entire record. Focus on your substantive arguments. based on the evidence of record, and where and how you have relied on that evidence, rather than arguments about the process that led you to the Board. Source: USPTO

Appeals: Efficiency and Effectiveness Rationales for Reversal of Prior Art Rejection Missing Elements/ Technical Differences Claim Interpretation Improper Rationale to Combine References Teaching Away Intended Purposes/Principles of Operation Use of Evidence Technical References Expert Declarations Other Suggestions

Precedential Opinions Supreme Court and Federal Circuit Decisions BPAI/PTAB Precedential Decisions 34 decisions since 1994 BPAI/PTAB Non-precedential decisions Very specific, fact-based decisions Not considered persuasive Need for More PTAB Precedential Decisions?

Questions? THANK YOU