Patent Planet: Board of Patent Appeals and Interferences

Showing posts with label Board of Patent Appeals and Interferences. Show all posts

Sunday, May 20, 2012

Kappos v. Hyatt - 35 USC § 145 Proceedings Allow New Evidence Beyond Record in PTO

In Kappos v. Hyattt, 132 S.Ct. 1690 (2012), the Supreme Court gave a favorable standard for patent appellants that need to introduce evidence after losing on appeal to the Board of Patent Appeals and Interferences (Board).

If the Board affirms the examiner's rejections under 35 USC §131 a patent applicant has two options: (1) a direct appeal to the Federal Circuit under 35 USC §141; or (2) an action against the PTO Director in federal district court under 35 USC §145. One can also abandon the application or file a continuation, but one unwilling to narrow the rejected claims in the continuation should not expect much.

Harold Wegner notes that a direct appeal to the Federal Circuit is a long shot, because an appellant will not be able to challenge the facts if there is "substantial evidence" to support the facts, which means the Federal Circuit will not reverse the Board’s decision on facts if a reasonable mind might accept the evidence as adequate to support a conclusion. For example, this standard would apply to the Board's factual findings underlying a legal conclusion of obviousness.

In Kappos v. Hyatt, the Supreme Court found no limits on applicants ability to introduce new evidence in a 35 USC § 145 proceeding beyond the limits set forth in the Federal Rules of Evidence and the Federal Rules of Civil Procedure. Further, Supreme Court held if new evidence is presented on a question of fact, the district court must make de novo (i.e., anew) findings that consider the new evidence and the USPTO record.

Companies are stretching to keep legal costs low. The majority had reasoned that "purposely concealed evidence" in the PTO was unlikely since it would undermine the case. However, given today's tight budgets, some may want seek to not file all of the favorable evidence such as that contained in declarations to avoid the expense and risk. However, holding back some favorable evidence may risk some court holding it was "purposely concealing evidence" rather than "reasonable management of legal costs" and that the evidence should not have been admitted by the district court.

In the past, appellants rarely filed a 35 USC § 145 action. Instead, most appealed directly to the Federal Circuit. Now I expect Kappos v. Hyatt will encourage more to file a 35 USC 145 action when (1) a continuation is unlikely to result in claim coverage that properly protects the invention, and (2) appellants need to introduce new evidence in the record in support of patentability.

Finally, I should note those losing an AIA post-grant proceeding at the Board will need to appeal directly to the Federal Circuit and will not be allowed to file a 35 USC § 145 actions

Monday, May 14, 2012

Board of Patent Appeals Backlog Enormous and Growing

On May 3, 2012, Director Kappos noted that the Board of Patent Appeals and Interferences (BPAI) has a large backlog of ex parte appeals. How large? In April 2012, Chief Administrative Judge Smith gave a presentation with slides at the AIPLA Spring Conference that indicates the growing backlog is over 30,000 cases.

The USPTO has made various attempts to attack the enormous backlog. In December 2011, Chief Judge Smith proposed various ways to streamline the appeals process in a blog post here but the backlog continues to grow. In the AIPLA presentation in April 2012, Chief Administrative Judge Smith suggests per curiam decisions and hiring more administrative judges would help.

Hiring more administrative judges, streamlining the appeal process, and per curiam decisions will help, but to really reduce the backlog the USPTO must increase the quality of initial examination. One way to increase quality is to liberally encourage PTO interviews. Interviews to discuss concrete detailed proposed amendments and replies are the best way to identify issues, reach a mutual understanding, and proceed on how to claim an invention with respect to the prior art. Examiners should initiate interviews and never refuse a request for an interview even after a final Office action. One reason applicants appeal is they have grown frustrated with a revolving door of prior art rejections, i.e., a paper exchange that goes round and round and is even at times sustained by some examiner's desires to get another RCE on their docket. Until we address this type of problem in examination, the appeal backlog is not going away.

This is not to suggest every application interviewed contains patentable subject matter and should result in a patent. Instead, the result should be that applicants and examiner understand what claims, if any, are patentable. And examination should end with a mutual understanding that nothing further would be gained by an appeal to the Board. Reaching a mutual understanding requires listening to someone with contrary views. It is difficult work, but I don't see how to avoid it. We don't need to hire more administrative judges or examiners, but retain and hire better examiners and administrative judges, who can rapidly assimilate the technology, the legal arguments and are paid sufficiently that they can make a career at the PTO. If we retain the best examiners, we will see the backlog reduced. And everyone should benefit from their experience. Otherwise, we accept that some of the best examiners opt to leave for law firms after working a few years at the PTO, that we have large backlog at the examination which includes 42% RCEs, and that we have an appeal backlog of about 30,000 cases.

On September 16, 2012, the America Invents Act (AIA) will add new post-grant procedures to the ex parte appeal workload being handled by the BPAI (later the Patent Trial and Appeal Board (PTAB)). Thus, the PTO needs to turn this around in the next six months to avoid further growth of the appeal backlog.

Copyright © 2012 Robert Moll. All rights reserved.

Saturday, April 14, 2012

Chief Judge Smith - Addressing Key Aspects of the America Invents Act

The Leahy-Smith America Invents Act Implementation web page contains news and information regarding the USPTO's implementation of the America Invents Act (AIA). As part of that effort, Chief Judge Smith of the Board of Patent Appeals and Interferences recently gave a message explaining the proposed rules for inter partes review (IPR), post grant review (PGR), covered business method review, and derivation under the AIA.

Chief Judge Smith says the public is regularly raising certain issues such as: (a) standards necessary to trigger inter partes (IPR) and post grant reviews (PGR), (b) the real party in interest requirement for an IPR/PGR petitioner, (c) timing for completion of a new trial, (d) the pro hac vice admission of non-registered practitioners, and (e) the definition of the term technological invention.

The following links give Chief Judge Smith's input on these key aspects of the AIA:

Monday, March 19, 2012

PTO America Invents Act Roadshow - Videos and Slides

The PTO America Invents Act (AIA) team recently finished its roadshow on the proposed PTO rules. It visited Alexandria, Boston, Chicago, Dallas, Fort Lauderdale, Salt Lake City, and Sunnyvale, California on the dates below. If you didn't attend, the PTO has given links to videos of the programs as presented in Alexandria, VA and Sunnyvale, CA as well as links to slides in all the cities:

AIA Roadshow Videos

AIA Roadshow Slides

Alexandria, VA (February 17, 2012)
Sunnyvale, CA (February 24, 2012)
Salt Lake, UT (February 27, 2012)
Dallas, TX (February 29, 2012)
Ft. Lauderdale, FL (March 2, 2012)
Boston, MA (March, 5, 2012)
Chicago, IL (March 7, 2012)

Thursday, January 19, 2012

USPTO Patent Appeal Rules Effective on January 23, 2012

The PTO published the final rules of appeal practice before the Board of Patent Appeals and Interferences. They apply to all appeals in which the notice of appeal is filed on or after January 23, 2012.

Although detailed (30 pages of fine print), the final rules simplify the current process and level the playing field in favor of appellants. More specifically, the current rules are amended to:

Remove certain requirements for the appeal brief;
Provide the Board take jurisdiction earlier in the process;
No longer require the examiner acknowledge receipt of the reply brief;
Allow one to seek review of an undesignated new ground of rejection in the examiner's answer or the Board's decision;
Presume an appeal is taken for all rejected claims; and
Clarify a rejection in examiner's answer that relies on evidence not presented in the last Office action is a new ground of rejection.

Fortunately, the PTO withdrew the appeal rules proposed in 2008. They were too technical and had little support from the patent community. However, I don't expect the final rules to do much to reduce the backlog of nearly 25,000 appeals displayed in Patently-O's BPAI Backlog: Only Growth in August 2011. This will require more Board members who are willing to write brief opinions.

It's usually best to work with examiners, but if a case is ready for appeal, don't let the backlog cause you to "shrivel up"as the PTO may intercept and allow a case after review of the appeal brief without waiting for the Board to decide. See e.g., US Application No. 10/683,204 using PAIR.