PTAB pilot program: abandon one appeal and get special priority for another appeal

Late breaking news from Carl Oppedahl's blog: a brand new pilot program at the PTAB allows an Applicant to get special priority for one application already on appeal, by withdrawing the appeal of another application. "Special priority" means a PTAB "goal" of appeal decision no more than 4 months after the petition for special status is granted.

See Carl's post here for full details, and here's a link to the Federal Register Notice. Be sure and read Carl's warning about careful handling of the application withdrawn from appeal.

The PTAB says this program runs until June 19, 2016, or until 2,000 appeals are made special, whichever comes first. The PTAB may choose to extend the program, depending on the results of the pilot. The "Pre Appeal Brief Conference" (PABC) program has been around since 2005 – and is still officially a "pilot pogram." Not sure if it makes any difference, but the PABC is administered by the PTO generally, where this new one appears to be administered directly by the PTAB. 

New Appeal Rules and New Terminal Disclaimer Form

New Appeal Rules go into effect Jan. 23: The PTO has adopted new rules for proceedings before the BPAI. The new rules apply to appeals with a Notice of Appeal filed on or after Jan. 23, 2012.  Several of the rules relate to Appeal Brief content and actually simplify things for Applicant. The biggest change to the rules relates to new grounds of rejection in an Examiner's answer: what constitutes a new ground, and what happens when a new ground appears. See the two-part summary of the rules at the PharmaPatents blog: Rules Simplifying Ex Parte Appeal Practice and New Guidance on New Rejections on Appeal.

EFS now offers web-based Terminal Disclaimer: The PTO has made a small but very useful improvement to e-filing. Instead of uploading a Terminal Disclaimer in the form of a PDF, you can now fill out a web-based Terminal Disclaimer form. See the PTO announcement here and more details here. The TD is automatically processed to verify that the filer is listed on the power of attorney, and if so the TD is automatically approved. In contrast, filing the old way requires a manual review of the TD by PTO personnel. One caveat: if you're not on the power of attorney, the assignee must sign, in which case you'll probably want to file the old way.

New stuff from the PTO

• EFS-Web has been updated to process several types of petitions automatically. See the PTO notice  here. You fill out an online form and the petition is granted in real time by EFS software, without action by a human at the Petitions Office. The list of auto-granted petitions includes Withdraw from Issue and Withdraw as Attorney. Auto granting of Withdraw from Issue is particularly helpful, because under the old procedure the petition was ineffective unless it was "actually received and granted by the appropriate officials before the date of issue."

• The PTO is working on new regulations to change Patent Term Adjustment (PTA) and Patent Term Extension (PTE). (See Federal Reigster notice here.) The biggest change appears to be handling of appeals to the BPAI. PatentDocs reports (here) that under the proposed new rules, reopening of prosecution by the Examiner after a Notice of Appeal results in an increase in term via the PTA or PTE adjustment.

• PharmaPatents reports here on a recent district court lawsuit challenging the PTO's calculation of PTA. This tidbit from the post highlights how PTA is affected by a Non-Compliant Response:
  

  PTA penalty for a "non-compliant" response is particularly harsh, because no matter how long the USPTO takes to notice the alleged defect in the response, and no matter how promptly the defect is corrected, the PTA rules charge Applicants with "delay" for the entire time period from the filing of the original response until the filing of a corrected response.

New Examination Guidelines for Definiteness and Functional Language

The PTO has released new Examination Guidelines for Definiteness under 112 Second and for "Computer Implemented Functional Claim Limitations." You can find the Guidelines here.

PharmaPatents blog has a summary of the guidelines here, along with some commentary. IPWatchdog has a summary here, along with a discussion of how they fit in with other Kappos initiatives.

Prosecution gone wrong

Examiner Interviews are widely viewed as a great way of making forward progress in an application. This was certainly not what happened in one file history that I ran across, where prosecution seemed to go off the rails as a result of an Examiner Interview. Or, more accurately, as a result of the Examiner's Interview Summary, which (according to the Applicant's representative) accused the Applicant's representative of bribing the Examiner!

Here are the juicy details. After a Final Office Action which included prior art rejections, an interview was conducted to discuss claim amendments to overcome the outstanding rejections. The Examiner's Interview Summary said:

The Examiner indicated that such an amendment would define over Hartigan et al as a 35 USC 102 reference, but indicated that the amendment would be subject to further search and/or consideration. [Applicant's representative] then asked if the Examiner would guarantee that if he filed an RCE with said amendment, the Hartigan et al reference would not be applied to the claims in a 35 USC 103 rejection and the Silvis et al and Benett et al references also would not be applied under 35 USC 102 or 35 USC 103. The Examiner stated that he could in no way guarantee that such would happen ... noting that the claims would be subject to further consideration and/or search. [Applicant's representative] then noted that I would receive two counts upon filing of the RCE. The Examiner acknowledged this and noted that examiners are not in the habit of trading counts for guaranteeing that certain prior art references would not be applied to the claims. [Applicant's representative] then indicated that he would go to appeal, noting that he had a 60% chance of winning the appeal. The Examiner stated that he has every right to appeal, and could proceed as he wished.

The Applicant filed a Notice of Appeal and an Appeal Brief. The Applicant simultaneously filed an After Final Response which included an Interview Summary.

In the Interview Summary, the Applicant's representative took offense at the Examiner's use of "trading counts" in the Examiner's Interview Summary. According to the Applicant's representative, the Examiner had accused the practitioner of bribery, an allegation which amounted to defamation. The patent practitioner then asked the PTO to reprimand the Examiner and reassign the application to another Examiner.

Here's the Applicant's Interview Summary:

     It is Applicant's belief that the Examiner has willfully fabricated false information in the Interview Summary dated 10/24/06. It is also Applicant's belief that the Examiner has deliberately attempted to keep communications out of the filewrapper.
     The tone of the third-to-last sentence of the Examiner's Interview Summary (see Exhibit A) falsely accuses Applicant's attorney of bribery. Applicants submit such a  statement is not only defamatory, but cannot be supported by the communication between the Examiner and Applicant's attorney of record. Further, the Examiner's statement that Applicants' required a guarantee with respect to the application a 35 USC 103 rejection in view of as-yet-to-be-performed search not only absurd, but patently false. Moreover, the Examiner has made these and other  inflammatory and defamatory remarks a matter of permanent record. This is outrageous and should not be permitted to stand.
     Applicants respectfully request that the Examiner's Interview Summary dated 10/02/2006 be stricken and removed from the record of prosecution in this case.
     Due to the substantial differences in the Examiner's and Applicants' accounts of the Interview and the fact that the Examiner did not comment or question the accuracy of Applicants' summary the Examiner's Interview Summary has failed to comply with at least MPEP 713.04.
     It is clear that at best there has been a serious breakdown in communication between the Examiner and Applicants' attorney of record, and at worst there has been retaliatory action's taken by the Examiner.
     Regardless, it is Applicants' belief that these differences will likely prevent future communications between the Examiner and Applicants' attorney of record from being open and productive. Therefore, Applicants respectfully request reassignment of the instant application to another Examiner. Moreover, Applicants consider these matters to constitute a serious breach of [the Examiner's] professional responsibility and respectfully request that this case be referred to [the Art Director] with the recommendation that [the Examiner] be formally sanctioned for his unprofessional conduct.
     In the event of reassignment of the instant application to another Examiner, Applicants would be willing to file an RCE and withdraw their appeal in favor of permitting the newly assigned Examiner a full and fair opportunity to review the case as well as to conduct an updated search.

Are you wondering how this all came out? The application went on to appeal, where the Board affirmed the prior art rejections. The Applicant's request for reassignment to a new Examiner was ignored — as it should have been. Procedurally, this sort of request is handled via a Petition, not an After Final response.

I wonder what the client thought about all this. The client was a large corporation, presumably with access to other outside counsel. Would it make sense for the client to switch to another attorney for this particular case? Not to punish the attorney. Purely as a practical matter, because the relationship between the attorney and the Examiner had deteriorated so badly. Or is the relationship with Examiner irrelevant for this particular application because it was on appeal?

PTO proposes new appeal rules

Last week the PTO released a Notice of Proposed Rulemaking for rules governing ex parte appeals before the BPAI. (Read the official notice here.)

Generally, these rules make the applicant's job easier. The PharmaPatents blog has a nice summary here, so I won't bother with one. I will also tell you my personal favorite among all the changes: Summary of the Claimed Subject Matter. The current rule requires an explanation of each limitation of each claim under appeal. The proposed rule requires only an explanation of "each limitation in dispute by appellant." Less work for me and a reduced file wrapper as compared to the current practice.

I'm also glad to see a detailed explanation – almost three pages – of what constitutes a new ground of rejection in an Examiner's Answer. Five examples of what does constitute a new ground and five examples of what does not. While I don't particularly like the "not a new ground" list, I'm happy to have guidance from the PTO rather leaving this up to the Examiner's interpretation. While this guidance is not part of the text of the rule itself, I would confidently refer to the Federal Register Notice when arguing that the Answer did contain a new ground, if it came to that.


Past History: As you may recall, the PTO suspended the last proposed package of appeals rules. That package was supposed to go into effect December 2008, but ended up suspended after significant comment from patent practitioners. The currently proposed rule package bears little resemblance to the last one –which is a good thing.

PTO introduces new quality metrics for examination

The Inventive Step blog reports here about a new suite of PTO quality metrics recently introduced by Director Kappos.

One is "Final Disposition Compliance Rate," which involves a review of final Office Actions and Notices of Allowance for clear error – i.e., did the Examiner allow something that he shouldn't have and did the Examiner finally reject something he shouldn't have.  This metric has been in use before Kappos.

But several other metrics are new. I'm particular encouraged by two of the new ones: a review of the Examiner's first search ("First Office Action on the Merits Search Review"); and a review of the Examiner's first Office Action ("Complete First Action on the Merits Review").

What exactly is the PTO going to do with these metrics? According to an official PTO description (here), the metrics will "aid in identification of their sources so that problems may be remediated by training, and so that the presence of outstanding quality procedures may be identified and encouraged."

New PTO procedure relaxes requirements for Examiner interview

Patent Docs reports here about a relatively new PTO procedure which relaxes the requirements for attorney/agent participation in an Examiner interview. According to the Patent Docs post:

Under the old procedure, practitioners were required to file a power of attorney or authorization to act in a representative capacity in order to participate in an interview.  Under the new procedure, practitioners need only file an Applicant Initiated Interview Request Form (PTO-431A).

I'm not sure that all Examiners followed the old, more rigorous, procedure, but I like the new procedure better.

PTO new KSR guidelines

The PTO has published Updated KSR Guidelines in the Federal Register (available here). The guidelines have been updated in view of 24 post-KSR Circuit opinions from the Federal Circuit.

The Guidelines include a "teaching point" for each of the post-KSR opinions. The Guidelines break the opinions into two main categories: 20 opinions dealing with the prima facie case; and 4 opinions dealing with rebuttal evidence. The prima facie category is further divided into: Combining Prior Art Elements (6 opinions); Substituting One Known Element for Another (7 opinions); and Obvious to Try (7 opinions).

The Guidelines repeatedly stress the importance of fact finding and explanation.

• "It remains Office policy that appropriate factual findings are required in order to apply the enumerated rationales properly. If a rejection has been made that omits one of the required factual findings, and in response to the rejection a practitioner or inventor points out the omission, Office personnel must either withdraw the rejection, or repeat the rejection including all required factual findings"
• "This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity"
• "When considering obviousness, Office personnel are cautioned against treating any line of reasoning as a per se rule."
• "Simply stating the principle (e.g., "art recognized equivalent," "structural similarity") without providing an explanation of its applicability to the facts of the case at hand is generally not sufficient to establish a prima facie case of obviousness."

The Guidelines also refer to Examiner training materials from 2008 that are specific to particular technology centers, found at http://www.uspto.gov/web/offices/pac/dapp/opla/ksr/ksr_training_materials.htm.

PTO releases Bilski Examination guidelines

Takeaway: The new PTO guidelines for § 101 examination under Bilski are now available here. The guidelines identify a number of factors that should be weighed to determine whether a method claim is directed to an abstract idea, and is thus ineligible for patent protection under 101. The factors include:

• Execution by a machine               — weighs against an abstract idea
• Transformation of an article         — weighs against an abstract idea
• Application of a Law of Nature   — weighs in favor of an abstract idea
• General principle involved in executing the method  — weighs in favor of an abstract idea

The claims should be examined for all requirements for patentability, not just § 101. Only in the the most extreme case should an Examiner treat a § 101 rejection as a barrier preventing examination under § 102/103 and § 112.

The Examiner should provide a "clear rationale supporting the determination that an abstract idea has been claimed, such that the examiner establishes a prima facie case of patentability."

My two cents: Note that the guidelines speak only of method claims. Thus, I would expect Examiners to stop applying "abstract idea" to apparatus, system, or computer-readable medium claims. I find this encouraging, since I understand that the Solicitor's office looked carefully into the case law in drafting these guidelines. So far, the district courts and the BPAI have routinely applied "abstract idea" to all types of claims. I wonder if the BPAI will take a look at the Examiner guidelines. [Perhaps they should not, as a matter of policy, in order to keep some degree of judicial independence.]

As soon as Bilski was released, the PTO released a memo to Examiners indicating that guidelines were in the works, and a one paragraph summary of how Examiners were to handle Bilski in the meantime. The summary said that a method claim that fails the Machine-or-Transformation test should be rejected under § 101 absent a "clear indication" that it is not directed to an abstract idea. A number of practitioners expressed concern about the phrasing used the memo, interpreting this as shifting the burden to the applicant to show patent eligibility before the PTO even made a prima facie case. (For example, see the guest post here on PatentlyO.)  The PTO's guidelines specifically state that the Examiner must establish a prima facie case. I'm interested to see if this statement allays those concerns.
  
I speculated in an earlier post on whether the Machine-or-Transformation was a safe harbor, such that passing MoT ended the analysis. The PTO guidelines have a clear answer to this question. Machine is a factor, as is Transformation. But the ultimate issue is whether or not a claim is directed to an "abstract idea." Thus, it's theoretically possible under the guidelines that a given claim could be executed by a machine and transform an article, and still not be patentable subject matter, if the remaining factors outweigh the first two.

An MPEP for the 21st Century

Director Kappos has a new vision for the MPEP, one that "uses 21st century authoring and contributing techniques". Kappos has blogged about "Reengineering the MPEP" here and here. His second post notes that after soliciting comments, "there was broad consensus that the USPTO should be the keeper of the official version of the text, but that it would be useful to have outside contributions to the content, in several different forms."

New revision of MPEP

A new revision to the MPEP has just been released: Revision 8 of the Eighth Edition. It's available on the PTO website here (via same link as before).

Look at the "Blue Pages" to see what's changed. All I'm gonna say is: no huge changes. But if you prosecute patents for a living, the MPEP is important enough for see for yourself what's changed. If not, the MPEP isn't important to you, so don't bother.

So far, Revision 8 is only available in per-chapter PDF. I expect the PTO will eventually provide in HTML form also.

Challenge to PTO procedure in view of Wyeth v. Kappos

Earlier this year, the Federal Circuit ruled in Wyeth v. Kappos that the PTO had been miscalcuating patent term adjustment (PTA) under 35 U.S.C. § 154(b).  In response, the PTO announced that it would revise its PTA calculation software to comply with Wyeth. In the meantime, the PTO enacted an temporary expedited procedure allowing patentees to request PTA recalculation. Because the procedure is expected to be temporary, the PTO is making it available only for patents issued between August 1, 2009 and March 2, 2010.

PatentDocs reports here that the Swiss pharma company Novartis has filed a lawsuit challenging the inapplicability of the procedure to "older patents." The basis for the challenge was "arbitrary and capricious" treatment under the Administrative Procedure Act. The lawsuit also asks for the district court to recalculate PTA for eleven Novartis patents.

If you want more background, PatentDocs has coverage of Wyeth v Kappos here and the PTO interim procedure here.

PTO has new Ombudsman program

Do you have an application in which you can't get an answer from the Examiner or his SPE? Consider trying out the new PTO Ombudsman pilot program. You can find the announcement about the Ombudsman program here.

Here's how a summary of how the process works. You submit your issue via an electronic form on the Ombudsman page. You get a call back from the ombudsman within one business day. The ombudsman forwards the issue to "an official in the appropriate organization that is best suited to resolve the issue (e.g., Technical Support Staff, Supervisory Patent Examiner, or TC Director)." The ombudsman follows up on the issue regularly. The target is to have a resolution within 10 business days.

The PTO stresses that before using the program, you should try normal channels first – Examiner, then SPE. Also, it's for purely procedural issues – substantive issues should be handled by an appeal or a petition.

The info provided by the PTO doesn't say exactly what matters are appropriate for this program. Here's some sheer speculation on my part. Trouble in scheduling an interview? You filed a Reply Brief six months ago and the Examiner hasn't forwarded the case to the BPAI? The Issue branch calls six months after you paid the issue fee to say you need to file an RCE to fix a problem with improper claim dependency, yet the Examiner says he can't fix it because the issue fee has already been paid? [This last one happened to me, and luckily it resolved itself.]

This program is one of Director Kappos' many new directives aimed at improving the process for patent applicants. He's mentioned several others on his blog, such as re-engineering the MPEP and streamlining the non-compliant appeal brief process. I'm anxious to see how the Ombudsman program will work out.

Backup EFS system for unscheduled outages

The PTO's Electronic Business Center has announced a backup system which allows e-filing during an unscheduled outage of the primary portal to EFS-Web. This backup system works like EFS for Unregistered Filers – no certificate at login, no dropdown list of customer numbers, and no saved submissions. As far as I'm concerned, those are just minor inconveniences. The only real gotcha I see is that online payment must be completed at time of submission. 

Details are available from the PTO here. On that page is a link to the contingency server, which you'll want to bookmark.

I first heard about this on Carl Oppedahl's excellent EFS listserv. You can get info here about signing up for the EFS mailing list and/or the companion PAIR list.

Change in PTO procedure: BPAI, not Examiner, will determine if brief is compliant

PTO Director Kappos announced on his blog (here) a change in PTO procedure: the Board of Patent Appeals and Interferences will now have responsibility for determining whether an Appeal Brief is compliant or non-compliant. Details can found in the Federal Register (here).

The new procedure, which goes into effect March 30, 2010, is a big change from existing procedure, whereby an Appeal Brief went to the Examiner first  Under the new procedure, the Examiner won't see the Appeal Brief until the BPAI has checked it for compliance with 37 C.F.R 41.37. A memo to the Examining Corps (here) which announced this new procedure provides additional information, and indicates that a brief with "only minor informalities that do not affect the BPAI panel's ability to render a decision" will be accepted.

I think this new procedure is great news for all parties. First of all, Examiners can spend more time examining and less time dealing with formalities. But I see a more important ramification. Now that compliance will be determined by a small subset of BPAI personnel rather than a large number of Examiners, we should start to see some consistency in what does and doesn't constitute a compliant Appeal Brief.

I say this because it wasn't the nit-picky requirements that I found maddening. After all, the CFR itself dictates a lot of specifics about what an appeal brief must look like. If it's in the rules, you can expect to be required to get that right. No, what I found maddening was that what worked in one Brief didn't work in another. The Examiners and Legal Instrument Examiners were very inconsistent in applying the rules.

PTO memo on acceptable computer-readable medium claims

A new memo on acceptable language in computer-readable medium claims is available on the PTO website at  http://www.uspto.gov/patents/law/notices/101_crm_20100127.pdf

The memo, signed by Director Kappos himself, is "an effort to assist the patent community in overcoming a rejection or a potential rejection under §101." The memo suggests amending the claims to state that the computer-readable medium is “non-transitory.” The PTO is taking the position that such an amendment is not new matter even if the word "non-transitory" is not in the spec — as long as the spec did describe the medium as *something* other than a signal.

It doesn't appear to me that this memo has yet been officially published to the outside world. Although it's on the PTO website, it's not on the page with all the other examination guidelines (here).

I suspect this is an internal memo that has been leaked, and that the memo will be made official in the near future. I found out about the memo from the IP Spotlight blog.

Explanation of Examiner incentives

I've alluded to the Examiner count system a couple of times on this blog, but never bothered to explain it. I found a series of posts on the Patents 101 blog, titled "What is the Examiner's Motivation?", which has a good overview of the Examiner performance evaluation system. If you don't know much about counts and biweeks at the PTO, I think this would be good reading.

The posts are written by a patent attorney, and I'm not sure I agree with all the conclusions he draws about how the count system plays out. Nonetheless, I'm always interested in hearing different viewpoints, so these posts are worth reading for that reason too.

Does an RCE always buy two more rounds of prosecution?

Do you expect an RCE to buy you two more rounds of prosecution? That's surely what happens in the vast majority of cases. However, a strict reading of MPEP 706.07(b) seems to say that under limited circumstances, an RCE only buys you one round.

Takeaway: The Examiner is allowed to take you final on the first OA after the RCE if he doesn't find your arguments persuasive AND as long as one of two other conditions is met:  a) you didn't make any claim amendments with the RCE; or b) you made claim amendments, but didn't present them in an After-Final response.

Digging deeper:

706.07(b) Final Rejection, When Proper on First Action
The claims of an application for which a request for continued examination (RCE) has been filed may be finally rejected in the action immediately subsequent to the filing of the RCE (with a submission and fee under 37 CFR  1.114) where all the claims in the application after the entry of the submission under 37 CFR  1.114 (A) are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR  1.114, and (B) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to the filing of the RCE under 37 CFR  1.114.

Simply put, the first OA after an RCE can be final when a) the claims could have been finally rejected if entered prior to the RCE; and b) the claims are drawn to the same invention as before.

Before parsing these two conditions, note the same section of the MPEP lists an important exception:

However, it would not be proper to make final a first Office action in a continuing or substitute application or an RCE where that application contains material which was presented in the earlier application after final rejection or closing of prosecution but was denied entry because (A) new issues were raised that required further`consideration and/or search, or (B) the issue of new matter was raised.

The way I read this, you're safe from final-on-first-OA-after-RCE as long as you follow this procedure:

• File an After-Final response with claim amendments.
• Wait for the Advisory Action denying entry of the amendments.
• File an RCE to get those amendments entered.

Since this safe-harbor provision only applies when amendments or evidence was "denied entry," you're not safe if you argue without amending claims. In such a case, the Examiner can immediately take you final if he doesn't find your arguments persuasive.

I think there are reasons to prefer going straight to the RCE rather than taking the AF-AA-RCE route. One is that the AF must be filed within two months to avoid EOT fees. Even if you do hit the two-month date, you're going to owe at least the 1-month EOT unless you file the RCE on the very same day the PTO mails the AA.

So if you want to go straight to RCE, how can you reduce your vulnerability to final-on-first-OA-after-RCE? We need to parse the pair of conditions that allow final-on-first-OA-after-RCE:

• All claims are drawn to the same invention as before. 
• All claims could have been finally rejected if entered prior to the RCE.

I consider "drawn to the same invention" to be a term of art which refers to restriction practice. Thus, I'm hesitant to argue that some of my claims are not drawn to the same invention, even if doing so could avoid final-on-first-OA-after-RCE, because it leaves me vulnerable to a restriction requirement.

So let's assume that your claim amendments do meet the "same invention" prong. Even so, the Examiner can't take you final immediately after the RCE unless the second "could have been finally rejected" prong is also met.

Clearly, your claims "could have been finally rejected" if the Examiner finds all the elements in the references already of record. Put another way, if the Examiner has to introduce a new reference, he can't issue a final rejection, and you're safe.

Intuitively, you can see that the more your amendment changes claim scope, the less likely it is the Examiner can find everything in the references of record. In this respect, an amendment that adds a whole new feature is more likely to produce a new reference than one that merely clarifies something (e.g., "wherein the method is implemented in a computer" or "wherein the first and the second widgets are different"). Even when adding a new feature, you might want convince yourself that none of those secondary references discloses the added feature.

Perhaps a middle ground approach is the following. If you're making substantive amendments that narrow significantly, go straight to RCE because you're counting on the Examiner having to introduce a new reference. But if you're making smaller clarifying amendments, first try to get them in After-Final.

For what it's worth, it's rare that I see this final-on-first-OA-after-RCE situation.

What do SPEs do?

If you want to learn more about the role of SPEs (supervisory patent examiners) at the PTO, read the comment thread here at the recent Patently-O post about "rethinking the role of SPEs". 

It appears that a number of Examiners contributed to the comment thread. Sprinkled among the usual "what's wrong with the PTO" discussion between Examiners and practitioners are some interesting tidbits about the inner workings of the Examiner corps.