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Patent Appeals

An appeal at the Patent Office is an administrative process providing for substantive review of some action taken by the patent examiner in a patent application. Where a patent examiner has twice rejected a patent application, such as for novelty or obviousness issues, an appeal can be filed to have the case reviewed by the Patent Trial and Appeal Board. PTAB appeals should not be lightly entered, and the below discussion only very quickly touches on the major phases of an appeal. Please consult an experienced patent attorney if you have particular questions about the process or about a pending patent application.

Notice of Appeal
A notice of appeal must first be filed to institute an appeal. This involves filing the Notice of Appeal paperwork and paying the appeal fee, which at the time of this writing was $400.00 for small entities. The Notice of Appeal filing tolls the period for responding to the last office action. Instead, it initiates a 2 month period for filing the Appeal Brief.

Appeal Brief
The Appeal Brief sets forth the Appellant’s argument. It must present arguments responsive to every ground of rejection stated by the examiner in the Office action from which the appeal has been taken. If any ground of rejection is not addressed, argument or challenge to that ground is waived. An appeal brief should be filed within 2 months of the Notice of Appeal. However, 1-month extensions can be obtained through payment of a surcharge.

Examiner’s Answer
After the Appeal Brief is filed, the Examiner may respond with a formal Answer. The Answer is simply the Examiner’s response supporting his or her previous rejections and addressing the Appellant’s argument. The Answer is deemed to include all the rejections presented in the Office Action from which the Appellant has appealed, and the Answer may also present new grounds for rejection. If the Answer presents a new ground of rejection, the Appellant is given two months to either reopen prosecution or maintain the appeal and present a Reply Brief that addresses the new grounds. The Examiner, together with a Supervisory Patent Examiner and another experienced examiner, will then conduct an appeal conference to discuss the state of the appeal.

Oral Hearing
Oral argument can be requested. It should be requested only in those circumstances in which the Appellant considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as appeals decided after an oral hearing.

Board Decision
After quite some time (several years, often) the Board will consider the appeal, the briefs submitted, the facts, and the law, and establish a decision. The decision will generally either affirm, reverse, partially affirm, or remand the decision of the Examiner. After decision, jurisdiction of the application returns to the Examiner for further review consistent with the decision of the Board. The Appellant may also request a rehearing within 2 months of the decision to raise new arguments in light of new law or new rejections.

Patent Office Opens San Jose Office

The Patent Office has been openipatent officeng regional offices to better serve inventors in the US.  While Alexandria, Virginia is headquarters for the Patent Office, within the past 3 years, satellite offices have been opened in Detroit and Denver.  Dallas is scheduled to open later this month.

The USPTO opened the doors to its Silicon Valley Regional Office on October 15.  The new office is intended to entrepreneurs, independent inventors, and companies in the West Coast region advance cutting-edge ideas to the marketplace, grow their businesses, and more efficiently navigate the US patent system.  Obviously, the location was a strategic one, with San Jose marking the center of Silicon Valley.  Patent Office Director Lee said: “Today’s formal office opening is a huge step forward for innovators throughout the region.  This office will be a one-stop shop of resources for those who need it at every step of the business lifecycle.”

The new office will assist the USPTO in fostering and protecting innovation. USPTO services will be readily accessible to all applicants and the office will serve as a hub of education and outreach to the West Coast region.  The office will benefit from hiring local talent as both patent examiners and Patent Trial and Appeal Board (PTAB) judges.  The new office in Silicon Valley will help entrepreneurs bring their products to market quickly, as well as provide resources tailored to local startups.

When the Dallas branch is opened, the Patent Office will have a presence in each of the four continental time zones.

Reissue Patents

A patent can be reissued under a limited patent office 3set of circumstances. Generally, if an error is discovered which renders the patent wholly or partly inoperative, reissue may be the vehicle to correct the error. The Patent Office will reissue the patent to correct the error. You must pay a fee to reissue an application, and you must agree to surrender the original patent being corrected; you cannot have two concurrent patents on the same invention. The term of the reissued patent is limited by the unexpired term of the original patent.

New matter cannot be introduced into a reissue, but the scope of the claims can be enlarged to include broader subject matter when filed within two years of the grant of the patent. This is a common reason to file a reissue. Other reasons include correcting inventorship or adding narrower claims that should have been incorporated into the original patent. Some things, however, cannot be cured with a reissue. For instance, if a divisional was not filed during the pendency of the original application (after a restriction requirement was made), a reissue cannot be used to file the claims that would have been in the divisional application. Somewhat similarly, a reissue cannot be used to “recapture” claimed subject matter which was canceled from the original application, because such subject matter is considered to have been surrendered to the public.

Continuation Application Strategies

Kate S. Gaudry, Ph.D and Thomas D. Franklin, of Kilpatrick Townsend & Stockton LLP, wrote a few days ago an article on Patently-O regarding continuing application practice. I have written previously about continuing applications (here, here, here, and here), which include continuations, continuation-in-parts, and divisionals, but the authors did an excellent empirical study of such applications.  The authors found that the large majority of continuing applications filed were continuations, that more continuations are being filed each year, and that each year a larger percentage of the continuing applications filed are continuations.

Somewhat surprisingly, the study found that continuations are not prosecuted with much more success than original applications, nor are they likely to receive far fewer rejections.  The statistics only slightly more favorable treatment of a continuation application than an original app.  This runs somewhat counter to my experience, in which I’ve found continuations generally to be much more likely to receive an allowance and receive it faster.

Patent Office Automated Interview Request

The Patent Office has started a new program called “AIR,” which stands for Automated Interview Request. The program allows patent attorneys, agents, and applicants to file online requests for interviews with Examiners in their cases. Examiners can sometimes be difficult to get hold of, as many of them work non-standard schedules or practice “hoteling,” in which they work from home. They rarely answer the phone, though most are very good about returning calls. The AIR program is designed to improve the communication between patent attorneys and examiners in scheduling interviews. One issue I see with the AIR form is that it does not allow the applicant or applicant’s representative to request an interview with the Examiner and his or her supervisor, which is often desired. For this, I presume one should still call to request the interview.

By submitting this type of interview request, the pending patent application will be in compliance with the written authorization requirement for Internet communication in accordance with MPEP §502.03. This authorization will be in effect until the Applicant provides a written withdrawal of authorization to the Examiner of record.

Certificates of Correction

An issued patent should be reviewed upon receipt for errors. Occasionally, an error will crop up, either because of a minor clerical or typographical error, or because of something the Patent and Trademark Office processed incorrectly. These errors can be corrected if caught soon after issuance of the patent.

If the mistake was the applicant’s fault but occurred in good faith, then a certificate of correction may be requested. A fee must be paid along with this correction request. Once the certificate of correction issues, the certificate and patent together will operate in law as if the patent had originally been issued with the correction.

Two requirements must be met for a certificate of correction to issue. First, the error must be minor: it must be clerical or typographical or equally small in nature. Second, the correction cannot include new matter or anything that would require reexamination. Therefore, substantial changes to the claims, or changes beyond minor clerical or typographical changes, are not proper for such a request. Anything that would affect the scope or meaning of the patent would require reexamination. If a certificate of correction is the not the proper vehicle for the change, then you must try to implement the change through a reissue application.

Patent Office Website Features will not be Accessible to Chrome Users Soon

Some of the features of the Patent Office website, such as EFS-Web and Private PAIR, will no longer be accessible to users of Chrome after this month. Those programs are essential tools for a patent attorney, patent agent, or any inventor who has filed an application pro per. They are the portals to filing and accessing a patent application and its status and correspondence. Those two features also rely on Java.

In April 2015, Google Chrome removed the default ability to use the Java plug-in for browser version 42. This impacts one’s ability to access EFS-Web and Private PAIR because Java is required for your authentication into these systems. Currently, Chrome has a temporary workaround that will allow you to use the Java plug-in so that you can continue to log into EFS-Web and Private PAIR. However, this workaround will only work through September 2015, when Google Chrome plans to end their support for Java plug-ins with their newest browser, Chrome versions 45 and above. Therefore, Chrome users using version 45 and above will no longer be able to use the workaround and thus will not be able to log into EFS-Web or Private PAIR. Oracle recommends the use of alternative browsers such as Firefox, Internet Explorer, and Safari.

Although the above browsers should continue to work with EFS-Web and Private PAIR, there is always a possibility that these providers may decide to discontinue support of Java plug-ins as well. The USPTO is apparently investigating if there are possible strategies to mitigate the immediate impact, and is working on a longer term plan to improve the overall authentication process.

Direct and Indirect Patent Infringement – Evolving Standards under Akamai v. Limelight

Though I’m not a litigator, infringement concerns are a primary concern for many of my clients. Those concerns evolve with time. Despite decades of case law, the courts are still developing some of the fundamentals of patent infringement. There are two basic types of infringement: direct and indirect (which is further subdivided as contributory infringement and induced infringement. Direct infringement is – generally – infringement that you yourself participate in: you sell something infringing, you make something infringing, you use something infringing, etc. Indirect infringement, on the other hand, occurs when you contribute to another’s infringement, make another’s infringement possible, or benefit from another’s infringement.

Yesterday the Federal Circuit issued an opinion regarding direct infringement after the Supreme Court gave its opinion and told the Federal Circuit to take another look. The case involves the question of whether, when a patent is directed to a method comprising a number of steps, a single party can infringe that patent even if it did not practice every single one of the steps. In another way, the case asked whether a defendant may be liable for inducing patent infringement when no other party has actually directly infringed the patent. As may seem immediately obvious, the Supreme Court said no; induced infringement will not lie unless there is at least a direct infringer first.

The Federal Circuit has now expanded the definition of infringement to include situations where all of the steps, while not necessarily being performed by the defendant, may still be attributed to the defendant. Now, liability can be found where the defendant “conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.” This broadens the scope of liability beyond the earlier rule which required that the defendant either perform all the steps, use an agent to perform some or all of the steps, or contract with another or enter a joint venture to perform some or all of the steps. This new rule adopts the Supreme Court’s analysis of induced infringement under copyright law, which was used in the seminal case of MGM v. Grokster on internet-based peer-to-peer music file sharing (which happens to have been the subject of this author’s Law Review article).

The ruling indicates that infringement can now be found where a party performs some of the steps of the method claim even if the other steps are performed by another party.

After Final Consideration Pilot 2.0 Program

After a final Office Action has been issued, prosecution of a patent application is considered to be closed. This means that the Examiner will not automatically consider or enter further arguments or amendments. Arguments and amendments can nevertheless be presented, however, if they do not place the application in condition for allowance or would require non-trivial amounts of searching by the Examiner, the Examiner will generally refuse to enter the response. A Request for Continued Examination is then typically used to obtain further examination of the case.

Since 2012, the Patent Office has operated an After Final Consideration Pilot Program (“AFCP”) which allows applicants to obtain continued examination of a case without having to pay for an RCE. The AFCP allows Examiners to take additional time to review cases, and provides for additional interviews for the purpose of moving an application toward allowance.

There is no fee for requesting the AFCP itself, but there may be fees involved if a response is filed beyond the shortened statutory period. AFCPs can only be filed in original, continuation, and divisional patent applications, or for international applications in the national stage, and only after a final rejection has been issued. Argument alone cannot be presented; there must be an amendment to least one of the independent claims, and the applicant or its attorney must be available for interviews with the Examiner regarding the response filed with the AFCP.

The AFCP can provide a helpful means of compacting and expediting examination of a patent application toward issuance without the costs and delays associated with a Request for Continued Examination.

Patent Drawing Requirements

Patent drawings have changed over time. Patent drawings have gradually shifted from being hand-drawn masterpieces to machine-drawn printouts. Hand drawings are a lost art that we probably will never recapture. Many of the formal requirements associated with patent drawings have also changed over time. The Patent Office is much more lax in its acceptance of patent drawings. Nevertheless, there are many requirements which it still reviews drawings for and will occasionally reject just after filing, or which an Examiner will object to later on. This article describes some, but not all, of the things the Patent Office reviews when it comes to drawings, as well as some best practices for drawings.

  • Orientation of the page – the page is supposed to be oriented with sheet numbering at the top, or if the sheet is turned so that it is in landscape, with the sheet numbering at the right. I don’t believe the Office is strict with this requirement, but it is supposed to be a requirement.
  • Orientation of the numbers – the sheet number is the only number, letter, or other indicia which can have a different orientation than the others. If the sheet is to be read in portrait, then all reference characters should be oriented in that direction. If the sheet is to be read in landscape, then all reference characters should be oriented to facilitate reading in that direction, other than the sheet number. There should never be inconsistent orientation among the reference characters.
  • Words – other than reference characters, there should be no other marks, indicia, or words on a sheet Legends can be used but are subject to the Office’s final approval.
  • Black and white drawings are normally used and are preferred. Only in rare cases can color drawings be used. Photographs are almost never permitted. The exception is when color drawings or photographs are the “only practicable medium for illustrating the claimed invention.”
  • Greyscale drawings can really destroy the quality of your patent drawings once uploaded to the Patent Office. If you scan drawings in as black and white only, and be sure they are not greyscale, do so. The Patent Office pixelates greyscale drawings in a way that can often lead to a drawings rejection a year or two down the road.
  • Margins – each sheet must include a top margin of at least 1 inch, a left side margin of at least 1 inch, a right side margin of at least 5/8 inch, and a bottom margin of at least 3/8 inch.
  • Character of lines, numbers, and letters. All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.
  • English reference characters should be used except where other languages are commonly used (such as Greek alphabet letters to indicate angles)
  • Lead lines. Lead lines are those lines between the reference characters and the elements or structures. They should be straight or curved and should be as short as possible. They must originate in the immediate proximity of the reference character and extend to the feature indicated. Lead lines must not cross each other. Lead lines are required for each reference character except for those which indicate the surface or cross section on which they are placed. Such a reference character must be underlined to make it clear that a lead line has not been left out by mistake. Lead lines must be executed in the same way as lines in the drawing. See paragraph (l) of this section.

I have rarely or never seen the Patent Office enforce these rules. Don’t rely on that, though – they may change their policy any time, or they may decide to pick on your application!

  • The sheets must not contain frames around the sight (i.e., the usable surface), but should have scan target points (i.e., cross-hairs) printed on two cater-corner margin corners.
  • Orientation of multiple figures on one page. All views of the drawing must be grouped together and arranged on the sheets without wasting space, preferably in an upright position, clearly separated from one another, and must not be included in the sheets containing the specifications, claims, or abstract.
  • Exploded views. Exploded views, with the separated parts embraced by a bracket, to show the relationship or order of assembly of various parts are permissible. When an exploded view is shown in a figure which is on the same sheet as another figure, the exploded view should be placed in brackets.