Practice Before the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences

International Patent Appeal Examination Symposium November 19, 1998 Tokyo

GOVERNING LAWS AND REGULATIONS Title 35 of the United States Code (35 U.S.C.) Title 37 of the Code of Federal Regulations (37 CFR or “rules”)

35 U.S.C. § 7(a) The Commissioner, the Deputy Commissioner, the Assistant Commissioners, and the examiners-in-chief shall constitute the Board of Patent Appeals and Interferences. 1 Commissioner 2 Deputy Commissioner 3 Assistant Commissioner for Patents 4 Assistant Commissioner for Trademarks 5 Examiners-in-chief

Duties: 35 U.S.C. § 7(b) The board shall, "on written appeal of an applicant, review adverse decisions of examiners upon applications for patents and shall determine priority and patentability of inventions in interferences” Each appeal and interference is heard by at least 3 members of the board "Examiners-in-chief" are now being called "administrative patent judges" (1156 O.G. 32, November 9, 1993)

What we do In appeals, the board affirms or reverses the examiner's rejections of claims. In interferences, the board determines which party was the first to invent the subject matter sought by two or more parties. In interferences, the board may also determine patentability of subject matter.

The Administrative Patent Judges (APJs) n each is a lawyer n each has a bachelor of science degree in chemistry, biology, physics, or some form of engineering n some possess advanced technical degrees

The APJs (continued) n chief APJ n vice-chief APJ n 41 other APJs n roughly 75% of all APJ time is spent on deciding appeals n roughly 25% of all APJ time is spent on conducting and deciding interferences

The APJs (continued) informal administrative divisions: – interference – chemical – electrical – mechanical APJs from each division sit on panels with APJs from other divisions

Other board personnel 4 Program and Resources Administrators – communicate with the public and examining groups – keep computers running – track cases & produce statistics – generate routine procedural orders 40 person support staff (paralegal specialists, legal technicians and clerks) – prepare cases for decision – handle communications received and issued

FY 1998 Caseload n Disposed of 4091 ex parte appeals n Received 3779 ex parte appeals n Ending inventory = 8889 ex parte appeals awaiting decision n Declared 189 interferences n Terminated 204 interferences n Ending inventory = 433 interferences pending

EX PARTE APPEALS Governing provisions are: – 35 U.S.C. §§ 134 and 306 – 37 CFR §§

EX PARTE APPEALS 35 U.S.C. § 134 provides: “An applicant for a patent, any of whose claims has been twice rejected, may appeal to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.”

Appeal to the Board: Notice Notice of Appeal: 37 CFR § (amended effective December 1, 1997) – twice rejected or finally rejected – fee – jurisdiction passes to board upon transmittal of the file to the board – prior to entry of a decision on the appeal, the Commissioner may sua sponte order the application remanded to the examiner

Appeal to the Board: Notice changes effective December 1, 1997: – notice of appeal need not identify rejected claim(s) appealed – signature not required on notice of appeal

Brief in Support of Appeal 37 CFR § (amended effective April 21, 1995)

Provisions of § 1.192: (a)... Any arguments or authorities not included in the brief will be refused consideration by the Board of Patent Appeals and Interferences, unless good cause is shown. (b) On failure to file the brief, accompanied by the requisite fee, within the time allowed, the appeal shall stand dismissed.

Provisions of § 1.192: (c) The brief shall contain the following items under appropriate headings and in the order indicated below unless the brief is filed by an applicant who is not represented by a registered practitioner:

Provisions of § 1.192: (c)(1) Real party in interest.... (c)(2) Related appeals and interferences.... (c)(3) Status of Claims.... (c)(4) Status of Amendments.... (c)(5) Summary of Invention.... (c)(6) Issues.... (c)(7) Grouping of Claims.... (c)(8) Argument.... (c)(9) Appendix....

Provisions of § 1.192: (d) If a brief is filed which does not comply with all the requirements of paragraph (c) of this section, appellant will be notified of the reasons for non-compliance and provided with a period of one month within which to file an amended brief. If appellant does not file an amended brief during the one-month period, or files an amended brief which does not overcome all the reasons for non- compliance stated in the notification, the appeal will stand dismissed.

Examiner's Answer: 37 CFR § 1.193(a) (12/1/97) (a)(1) The primary examiner may, within such time as may be directed by the Commissioner, furnish a written statement in answer to appellant's brief including such explanation of the invention claimed and of the references and grounds of rejection as may be necessary, supplying a copy to appellant....

Examiner's Answer: 37 CFR § 1.193(a) (12/1/97) (a)(1)... If the primary examiner finds that the appeal is not regular in form or does not relate to an appealable action, the primary examiner shall so state. (a)(2) An examiner's answer must not include a new ground of rejection....

Examiner's Answer: 37 CFR § 1.193(b) (12/1/97) (b)(1) Appellant may file a reply brief to an examiner's answer within two months from the date of such examiner's answer. See § 1.136(b) for extensions of time for filing a reply brief in a patent application and § 1.550(c) for extensions of time for filing a reply brief in a reexamination proceeding....

Examiner's Answer: 37 CFR § 1.193(b) (12/1/97) (b)(1)... The primary examiner must either acknowledge receipt and entry of the reply brief or withdraw the final rejection and reopen prosecution to respond to the reply brief. A supplemental examiner's answer is not permitted, unless the application has been remanded by the Board of Patent Appeals and Interferences for such purpose.

Examiner's Answer: 37 CFR § 1.193(b) (12/1/97) (b)(2) Where prosecution is reopened by the primary examiner after an appeal or reply brief has been filed, appellant must exercise one of the following two options to avoid abandonment of the application: (i) File a reply under § 1.111, if the Office action is not final, or a reply under § 1.113, if the Office action is final; or (ii) Request reinstatement of the appeal.

Examiner's Answer: 37 CFR § 1.193(b) (12/1/97) (b)(2)(ii)... If reinstatement of the appeal is requested, such request must be accompanied by a supplemental appeal brief, but no new amendments, affidavits (§§ 1.130, or 1.132) or other evidence are permitted.

After 12/1/97 n A timely reply brief will always be entered n New amendments, affidavits, declaration or exhibits are not entered except as permitted by §§ and n No supplemental answer permitted unless remanded by the Board for that purpose.

Oral Hearing 37 CFR § 1.194

Oral Hearing: 37 CFR § 1.194(a) An oral hearing should be requested only in those circumstances in which appellant considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided without an oral hearing will receive the same consideration by the Board of Patent Appeals and Interferences as appeals decided after oral hearing. [emphasis supplied]

Oral Hearing: 37 CFR § 1.194(c) (change effective 12/1/97)... If the Board decides that a hearing is not necessary, the Board will so notify appellant. Note: This change simply makes formal what already exists informally -- where a panel has met and discovered that a remand is necessary or a reversal of all rejections is in order, an appellant will be so-informed and told to save himself/herself the trip.

The Board's Decision 37 CFR § 1.196

The Board's Decision 37 CFR § 1.196(b) (12/1/97) Should the Board of Patent Appeals and Interferences have knowledge of any grounds not involved in the appeal for rejecting any pending claim, it may include in the decision a statement to that effect with its reasons for so holding, which statement constitutes a new ground of rejection of the claim... [emphasis supplied].

The Board's Decision: 37 CFR § 1.196(b) (12/1/97)... A new ground of rejection shall not be considered final for purposes of judicial review.

The Board's Decision: 37 CFR § 1.196(b) (12/1/97) When the Board of Patent Appeals and Interferences makes a new ground of rejection, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of proceedings (§ 1.197(c)) as to the rejected claims [emphasis supplied]:...

The Board's Decision: 37 CFR § 1.196(b)(1) (12/1/97) OPTION 1... Submit an appropriate amendment of the claims so rejected or a showing of facts relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the application will be remanded to the examiner....

The Board's Decision: 37 CFR § 1.196(b)(1) (12/1/97) OPTION 1 (Continued)... The new ground of rejection is binding upon the examiner unless an amendment or showing of facts not previously of record be made which, in the opinion of the examiner, overcomes the new ground of rejection stated in the decision.... [emphasis supplied]

The Board's Decision: 37 CFR § 1.196(b)(1) (12/1/97) OPTION 1 (Continued)... Should the examiner reject the claims, appellant may again appeal pursuant to §§ through to the Board of Patent Appeals and Interferences.

The Board's Decision: 37 CFR § 1.196(b)(2) (12/1/97) OPTION 2 Request that the application be reheard under § 1.197(b) by the Board of Patent Appeals and Interferences upon the same record....

The Board's Decision: 37 CFR § 1.196(b)(2) (12/1/97) OPTION 2 (Continued)... The request for rehearing must address the new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in rendering the decision and also state all other grounds upon which rehearing is sought....

The Board's Decision: 37 CFR § 1.196(b)(2) (12/1/97) OPTION 2 (Continued)... Where request for such rehearing is made, the Board of Patent Appeals and Interferences shall rehear the new ground of rejection and, if necessary, render a new decision which shall include all grounds of rejection upon which a patent is refused....

The Board's Decision: 37 CFR § 1.196(b)(2) (12/1/97) OPTION 2 (Continued)... The decision on rehearing is deemed to incorporate the earlier decision for purposes of appeal, except for those portions specifically withdrawn on rehearing, and is final for the purpose of judicial review, except when noted otherwise in the decision.

The Board's Decision: 37 CFR § 1.196(d) (12/1/97) The Board of Patent Appeals and Interferences may require appellant to address any matter that is deemed appropriate for a reasoned decision on the pending appeal. Appellant will be given a non-extendible time period within which to respond to such a requirement.

Request for Rehearing / Submission of Amendment 37 CFR § 1.197(a) After decision by the Board of Patent Appeals and Interferences, the application will be returned to the examiner, subject to appellant's right of appeal or other review, for such further action by appellant or by the examiner, as the condition of the application may require, to carry into effect the decision.

Request for Rehearing / Submission of Amendment 37 CFR § 1.197(b) Appellant may file a single request for rehearing within two months from the date of the original decision, unless the original decision is so modified by the decision on rehearing as to become, in effect, a new decision, and the Board of Patent Appeals and Interferences so states....

Request for Rehearing / Submission of Amendment 37 CFR § 1.197(b) (continued)... The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the decision and also state all other grounds upon which rehearing is sought....

Request for Rehearing / Submission of Amendment 37 CFR § 1.197(b) (continued)... See § 1.136(b) for extensions of time for seeking rehearing in a patent application and § 1.550(c) for extensions of time for seeking rehearing in a reexamination proceeding.

Request for Rehearing / Submission of Amendment 37 CFR § 1.197(c) Termination of proceedings

Judicial review 35 U.S.C. §§ 141 and 145

INTERFERENCES 35 U.S.C. § CFR §§ through 1.690

Prerequisites (1) Both parties must be claiming the same or substantially the same invention. (2) The claims must be patentable to both parties. (3) An interference may not be declared between an application and a patent unless the application was claiming the same or substantially the same invention within one year after the issuance of the patent. 35 U.S.C. § 135(b).

Counts n Per 37 CFR § 1.601(f), a count defines the interfering subject matter between two or more applications or between one or more applications and one or more patents. n At the time the interference is initially declared, a count should be broad enough to encompass all of the claims that are patentable over the prior art and designated to correspond to the count.

Counts (continued) n When there is more than one count, each count shall define a separate patentable invention. n Any claim of an application or patent that is designated to correspond to a count is a claim involved in the interference within the meaning of 35 U.S.C. 135(a). n A claim of a patent or application that is designated to correspond to a count and is identical to the count is said to correspond exactly to the count.

Counts (continued) n A claim of a patent or application that is designated to correspond to a count but is not identical to the count is said to correspond substantially to the count. n When a count is broader in scope than all claims which correspond to the count, the count is a phantom count.

The Role Of The Examiner In addition to making the determination that the involved application(s) and patent(s) claim interfering subject matter (the same patentable invention in the words of Rule 601(n)), the examiner is required by 37 CFR § to prepare a statement identifying: (1) The proposed count or counts and, if there is more than one count proposed, explaining why the counts define different patentable inventions;

The Role Of The Examiner (continued)... the examiner is required by 37 CFR § to prepare a statement identifying: (2) The claims of any application or patent which correspond to each count, explaining why each claim designated as corresponding to a count is directed to the same patentable invention as the count;

The Role Of The Examiner (continued)... the examiner is required by 37 CFR § to prepare a statement identifying: (3) The claims in any application or patent which do not correspond to each count and explaining why each claim designated as not corresponding to any count is not directed to the same patentable invention as any count; and

The Role Of The Examiner (continued)... the examiner is required by 37 CFR § to prepare a statement identifying: (4) Whether an applicant or patentee is entitled to the benefit of the filing date of an earlier application and, if so, sufficient information to identify the earlier application.

The Interlocutory Role Of The Administrative Patent Judge

Final Decision

Judicial Review n 35 U.S.C. §§ 141 and 146 n A final decision of the board is reviewable in the Court of Appeals for the Federal Circuit or an appropriate United States District Court. n Any reviewing court can review all aspects of a decision including patentability, priority and all relevant interlocutory orders, such as denials of discovery.

Judicial Review in Interferences Board of Patent Appeals & Interferences Judgment Federal Circuit 35 U.S.C. § 141 District Court 35 U.S.C. § 146 Appeal Civil Action Appeal