The Patent Lawyers Club of Washington May 29, Michael R. Fleming Chief Administrative Patent Judge Board of Patent Appeals and Interferences Present and Future Perspectives- -Challenges- -Enhance Flexibility- -Best Practices-

The Patent Lawyers Club of Washington May 29, Major Accomplishments Interferences

The Patent Lawyers Club of Washington May 29, Major Accomplishments Ex Parte Appeals

The Patent Lawyers Club of Washington May 29, Ex Parte Results by TC for FY 08 (cumulative as of March 2008)

The Patent Lawyers Club of Washington May 29, Ex Parte Production * Projected * *

The Patent Lawyers Club of Washington May 29, Challenge Workload Increase

The Patent Lawyers Club of Washington May 29, Challenge Workload Increase: Record Years for BPAI Receipts FY1995FY1996FY2006FY2007FY2008 Receipts4,3183,6073,3494,6397,000

The Patent Lawyers Club of Washington May 29, Challenge

The Patent Lawyers Club of Washington May 29, Challenge

The Patent Lawyers Club of Washington May 29, Ex Parte Workload Increases Projected Effect of Examining Corps Initiatives on Ex Parte Appeals Workload Challenge

The Patent Lawyers Club of Washington May 29, Action Plan Hiring Administrative Patent Judges (APJs) Patent Attorneys (PAs) Management Structure Changes Streamline the Trial Division Implement APJ/PA program Increase Efficiency ACTS Releases Improve Efficiency in Writing Appeal Decisions Ex Parte Board Rules

The Patent Lawyers Club of Washington May 29, Appeals Division

The Patent Lawyers Club of Washington May 29, Trial Division

The Patent Lawyers Club of Washington May 29,

The Patent Lawyers Club of Washington May 29, Enhance Flexibility Proposed Ex Parte Appeal Rules Reduce the time between filing of Notice of Appeal to Entry of Docketing Notice at the Board Improve Appeal Process Improve Briefing

The Patent Lawyers Club of Washington May 29, Enhance Flexibility Proposed Ex Parte Appeal Rules Reduce the time between filing of Notice of Appeal to Entry of Docketing Notice at the Board No New Ground of Rejection in the Examiner’s Answer No Supplemental Examiner’s Answer Reduce the likelihood of a Return

The Patent Lawyers Club of Washington May 29, Enhance Flexibility Proposed Ex Parte Appeal Rules Reduce Administrative Returns of Appeal Briefs Determination of Non-Compliance – Examiners will check for presence of elements only, not substance of elements For many matters, if element is not present, presumption is that it does not exist, i.e., Real Party in Interest, Related Appeals, Evidence Appendix For other matters, the element must be present, but the Examiner will not hold the Brief defective if he/she disagrees with the statement of the element, i.e., Jurisdictional Statement, Table of Contents, Table of Authorities, Statement of Facts, Claims and Drawing Support Appendix, Means Analysis Appendix (when applicable)

The Patent Lawyers Club of Washington May 29, Total Minimum Time to Docketing: 14 months Total Maximum Time to Docketing: 20 months Patent Appeal Timeline (Present Appeal Rules)

The Patent Lawyers Club of Washington May 29, Total Minimum Time to Docketing: 8.5 months Total Maximum Time to Docketing: 14.5 months Patent Appeal Timeline (New Appeal Rules)

The Patent Lawyers Club of Washington May 29, Enhance Flexibility Proposed Ex Parte Appeal Rules Improve Process Focus on dispute Appellant is to establish that examiner erred Appellant is to identify new arguments in the appeal brief Appellant is to reference page number of the document of record for facts Aid and improve Patent Corps’ Appeal Conference Program

The Patent Lawyers Club of Washington May 29, Enhance Flexibility Proposed Ex Parte Appeal Rules Improve Briefing – Appeal Brief Statement of facts Argument Focus on why the examiner erred Address all points made by examiner Format of Argument – identify the point and indicate where the Appellant previously responded to the point Brief format requirement Page limitation Double spacing and font size Appendix Pending claims and status Claim support - map claims argued separately to specification Evidence section – affidavits and declarations

The Patent Lawyers Club of Washington May 29, Establishing Best Practices Publication of Board Decisions Precedential Informative Routine All Published on Board Website

The Patent Lawyers Club of Washington May 29, Establishing Best Practices Precedential Decisions Binding on Board Procedure for becoming precedential set forth in SOP 2

The Patent Lawyers Club of Washington May 29, Recent Precedential Decisions Ex parte Kubin, 83 USPQ2d 1410 (BPAI 2007) ( expanded panel) (obvious to try). Ex parte Smith, 83 USPQ2d 1509 (BPAI 2007) (expanded panel) ( predictable use of prior art elements according to their established functions). Ex parte Catan, 83 USPQ2d 1569 (BPAI 2007) ( expanded panel) (precise teaching of teaching, suggestion or motivation not required).

The Patent Lawyers Club of Washington May 29, Recent Precedential Decisions Ex Parte Nehls, Appeal No , 2008 WL (BPAI January 28, 2008) (expanded panel) (utility must be “substantial” and “specific”; nonfunctional descriptive material). Ex parte Letts, Appeal No , 2008 WL (BPAI January 31, 2008) (expanded panel) (BPAI will not accede to a conditional withdrawal of a claim on appeal).

The Patent Lawyers Club of Washington May 29, Recent Precedential Decisions Ex parte Fu, Appeal No , 2008 WL (BPAI March 31, 2008) (expanded panel) (one skilled in the art would anticipate success in substituting one species for its genus where the genus contains a limited number of species, citing KSR). Ex parte Ghuman, Appeal No (BPAI May 1, 2008) (expanded panel) (rejected claims not appealed are considered withdrawn and subject to cancellation by examiner).

The Patent Lawyers Club of Washington May 29, Informative Decisions Not Binding on Board or Examiners Illustrative of Board Norms – Addressing : Best Practices Reoccurring Problems Developing Areas of Law Citable by commercial reporting service or URL from BPAI website Establishing Best Practices

The Patent Lawyers Club of Washington May 29, Recently Posted Informative Decisions Obviousness Ex parte McBrearty, Appeal No (BPAI July 27, 2007) (application of § 103). Ex parte Wright, Appeal No (BPAI April 6, 2006) (consideration of secondary indicia of non–obviousness). Ex parte Jud, Appeal No (BPAI January 30, 2007) (determination of ordinary skill in the art). Ex parte Dart, Appeal No , 2007 WL (BPAI Aug. 22, 2007) (person skilled in the art uses known elements for their intended purpose). Ex parte Righi, Appeal No (BPAI July 25, 2007) (combination of known elements combined according to known methods yielding predictable results is likely obvious). Ex parte Tullis, Appeal No (BPAI May 17, 2006) (obviousness-type double patenting).

The Patent Lawyers Club of Washington May 29, Recently Posted Informative Decisions 35 U.S.C. § 102 Ex parte May, Appeal No (BPAI April 30, 2007) (prior art date of published application is earliest effective U.S. filing date). Ex parte Batteux, Appeal No (BPAI March 27, 2007) (inherent feature of reference need not be recognized by one of ordinary skill in the art). Ex parte Ashkenazi, 80 USPQ2d 1753 (BPAI 2005) (disclosure requirements the same for § 102(b) and § 102(e) references).

The Patent Lawyers Club of Washington May 29, Recently Posted Informative Decisions Reissue Ex parte Kraus, Appeal No (BPAI September 21, 2005) (reissue recapture rule). Ex parte Liebermann, Appeal No (BPAI May 17, 2007) (reissue recapture rule). Ex parte Wellerdieck, Appeal No (BPAI May 4, 2007) (term of patent cannot be expanded by reissue). Ex parte Bradshaw, Appeal No (BPAI July 19, 2007) (reissue recapture rule). Ex parte Adams, Appeal No (BPAI March 14, 2007) (error made by examiner’s amendment – claim indefinite – not correctable by broadening reissue).

The Patent Lawyers Club of Washington May 29, Recently Posted Informative Decisions Written Description Ex parte Gleave, 84 USPQ2d 1681 (BPAI 2006) aff’d 210 Fed. App’x 990 (Fed. Cir. 2006) (Rule 36) (claim defining composition in functional terms is defective under written description requirement of § 112, ¶ 1). Ex parte Srinivasan, Appeal No (BPAI May 1, 2007) (written description requirement under § 112, ¶ 1).

The Patent Lawyers Club of Washington May 29, Recently Posted Informative Decisions Nonfunctional Descriptive Material Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) aff’d 191 Fed. App’x 959 (Fed. Cir. 2006) (Rule 36) (nonfunctional descriptive material). Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) aff’d No (Fed. Cir. June 12, 2006) (Rule 36) (non-functional descriptive material).

The Patent Lawyers Club of Washington May 29, Recently Posted Informative Decisions Statutory Subject Matter Ex parte Bilski, Appeal No , 2006 WL (BPAI Sep. 26, 2006) (non-statutory subject matter) (appeal pending at Federal Circuit, Appeal No , en banc oral argument May 8, 2008). Ex parte Shealy, Appeal No , 2007 WL (BPAI Apr. 23, 2007) (non-statutory subject matter).

The Patent Lawyers Club of Washington May 29, Recently Posted Informative Decisions Interferences Karim v. Jobson, Int. No. 105,376, WL 630,220 (BPAI Feb. 28,2007) (Board has discretion to decide patentability issues presented that are not required for deciding priority). Rowells v. Vichinsky, Int. No. 105,518 (BPAI Mar. 6, 2007) (derivation must be supported by corroborated communication of invention to opposing party)

The Patent Lawyers Club of Washington May 29, Recently Posted Informative Decisions Interferences Perego v. Drehmel, Int. No. 105,467 (BPAI Mar. 9, 2007) (supplemental exhibit should be numbered the same as original exhibit). Guthrie v. Espiau, Int. No. 105,393 (BPAI Apr. 18, 2007) (derivation from opposing party is a priority issue). Ashurst v. Brugger, Int. No. 105,482 (BPAI Aug. 25, 2007) (standard for granting discovery requests is high and requires specific bases for expecting the discovery will be productive).

The Patent Lawyers Club of Washington May 29, Recently Posted Informative Decisions Interferences Rabbani v. Notomi, Int. Nos. 105,427 and 105,432 (BPAI Jan. 25, 2008) (on motions for priority, new evidence not permitted with reply brief). LaLonde v. Li, Int. No. 105,607 (BPAI Mar. 19, 2008) (party may not reserve right to modify its motions list).

The Patent Lawyers Club of Washington May 29, Routine Decisions All Other Board Decisions (Great Majority ) Citable for Whatever Persuasive Value They May Have Should be Cited Sparingly Establishing Best Practices

The Patent Lawyers Club of Washington May 29, Questions