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

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 Typical Prosecution Flow Non-final Office action Response to the non-final Office action Allowance File Patent Application Final Office action Prosecution closed RCE Prosecution reopened 2

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 Typical Prosecution Flow Final Office action Response after Final Advisory Action RCE Consider Appealing Allowance $930 Examiner Productive 3

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 Typical Prosecution Flow Notice of Appeal $ Appeal Brief $ Examiner’s Answer Allowance Prosecution Reopened Panel Meets $1,240 4

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 Typical Prosecution Flow Notice of Appeal with Request for Pre-Appeal Brief Conference Examiner’s Answer Written Panel Decision $ Appeal Brief $ Allowance Prosecution Reopened $620 Examiner NOT Productive RCE Proceed to Board $620 5

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 Effective Date –January 23, 2012 Applicability –All appeals where the appeal brief is filed on or after January 23, 2012 Effective Date of the New Rules 6

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 Lessen the burden on appellants and examiners Reduce time to transfer jurisdiction to the Board Reduce confusion as to which claims are on appeal Purposes for Rule Changes 7

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 Jurisdiction passes to the board upon the earlier of: –filing of a reply brief; or –expiration of the time to file the reply brief Jurisdiction over Appeal 8

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 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 Jurisdiction over Appeal 9

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 Contents of Appeal Brief Old RulesNew Rules Real Party in interestmay be required Related Appeals and Interferencesmay be required Status of claimsdeleted Status of amendmentsdeleted Summary of claimed subject matterrequired Grounds of rejection to be reviewed on appealdeleted Argumentrequired Claims Appendixrequired Evidence Appendixdeleted Related proceedings appendixdeleted 10

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 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 Real Party in Interest 11

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 Not necessary if there are no such related cases Related Appeals and Interferences 12

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 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 Related Appeals and Interferences 13

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 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 Summary of Claimed Subject Matter 14

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 Still required under the new Rules The Board may refuse to consider arguments not raised in the appeal brief –except as provided in § (Reply Briefs), § (Oral Hearings), and § (Requests for Rehearings) Must now identify errors alleged to have been made by the examiner in each ground of rejection Argument Section 15

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 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 Argument Section 16

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 Still required under the new Rules Clean copy of all pending claims on appeal Claims Appendix Section 17

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 The Examiner’s Answer 18

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 New grounds of rejection in the answer must be approved by the Director Examiner’s Answer 19

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 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 Petitioning the Examiner’s Answer 20

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 Reply Brief 21

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 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 Reply Brief 22

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 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 Examiner’s Response to Reply Brief 23

2012 AIPLA Mid-Winter Institute IP Practice in Japan Committee January 22, 2012 © AIPLA 2012 Thank you 24