July 3, 2020
This article was first published by The Patent Lawyer in their May/June 2020 issue.
Noel Courage and William Smith coauthored the article "Strategic Considerations to Decide Whether to Appeal in the USPTO", published in The Patent Lawyer, May/June 2020 issue. William Smith is a former Administrative Patent Judge at the USPTO.
Patent prosecution in the USPTO tends to proceed to final Office Action more quickly than in other jurisdictions, such as the European Patent Office and the Canadian Patent Office. In the US, additional rounds of argument can be bought by paying a fee and filing a request for continued examination or a continuation application. In that type of system, it is possible for an applicant to feel like it is on a treadmill, where the miles and fees accumulate without forward progress.
Applicants are often reluctant to give up claim scope, so patent attorneys regularly provide counsel on appropriate compromise. Other times, Some USPTO examiners may be hesitant to indicate allowable subject matter where they should do so. A case may also raise difficult legal or technical issues. Where the applicant is realistically entitled to a patent, but not making progress, it may be helpful to seek guidance from the Patent Trial and Appeal Board (PTAB) to change the examiner’s mind. Every applicant whose claims have been twice rejected may appeal the examiner's decision to the PTAB.
This article will discuss how to decide if your applicant’s case is ready for appeal, and if that would be the best strategy decision.
The Board and its internal workflow
To appeal, the applicant first files a notice of appeal and fee. Within two months from the date of the filing of the notice of appeal, the applicant must file an appeal brief.
Appeals are usually heard by a merits panel of at least three members of the Board. Typically the panel will consist of Administrative Patent Judges (APJ)
Panels are typically assigned on a random basis but an attempt is made to match APJs’ technical background with the technology under review in the appeal. However, there is no guarantee that the APJs assigned to the panel will have any particular knowledge about the involved technology. This should be kept in mind if you write an Appeal Brief.
The pre-appeal brief
If there is a clear deficiency in the prima facie case in support of a rejection, then the pre-appeal process is worth considering. Any applicant who has filed a notice of appeal has the opportunity to concurrently file a pre-appeal brief (maximum five pages). The pre-appeal brief provides an opportunity for matters on appeal to be reviewed by your examiner along with two other examiners. The pre-appeal process is completed prior to the deadline for filing of an appeal brief. The goals of the pre-appeal process are (1) to identify any clearly improper rejections based on factual errors, and (2) to identify the omission or presence of essential elements to establish a prima facie rejection.
This can be a helpful process if there is a clear legal or factual deficiency in the rejections. The conventional appeal process is more appropriate where there is an issue regarding an interpretation of the claims or prior art teachings. A shortcoming, from an applicant’s point of view, is that if the pre-appeal brief is deemed not persuasive, the case is sent for full appeal without consultation with the applicant’s patent attorney and without providing further reasons.
a. Which cases will likely need an appeal
Cases involving the following issues most commonly require an appeal:
b. Pre-appeal considerations
Not every patent application eligible for an appeal under the statute and rules is necessarily ready for an appeal. To determine whether an appeal to the PTAB is the best route to follow, a number of factors need to be evaluated. Also, in making this decision, use of modern patent prosecution data analytics that set forth the examiner’s track record during prosecution and at the PTAB should be considered.
i. Appealable or petitionable issue
A rough rule of thumb is that a rejection of claims is to be appealed to the PTAB while objections and procedural requirements are subject to petition.
Common situations where a practitioner finds it necessary to file a petition to overturn an examiner’s action include when an examiner makes a restriction requirement final or refuses to enter an amendment or an affidavit after a final rejection. Another situation that is subject to petition, not appeal, is when the examiner makes a premature final rejection. A petitionable matter cannot be argued in an Appeal Brief.
ii. Claim scope
The state of the overall record including the scope of the claims needs to be considered prior to seeking review of the examiner’s adverse decision. The first step should be a thorough review of the existing claims, to come to an understanding how they will be construed under the legal standard appropriate for claims pending before the USPTO.
It may come as a surprise how broadly a claim will be read by a patent examiner and/or a PTAB merits panel. Claims are given their broadest reasonable interpretation (“BRI”) consistent with the specification.1 This is a different standard than the “plain and ordinary standard” used by District Courts when construing claims in litigation.2 Don’t lock in on the examiner’s objections when considering claims. A significant number of patent applications contain rejections where the examiner has not construed all of the claims properly or in detail. It behooves the practitioner to take a step back and determine just how broad the claims are under the BRI standard. Once a Notice of Appeal has been filed, the opportunity to amend the claims is limited.
The fact that appellants can point to definitions or usages that conform to their interpretation does not make the PTO's definition unreasonable when the PTO can point to other sources that support its interpretation.3 While Morris states that a claim will be interpreted in view of whatever enlightenment there may be in the specification, the PTO will be looking first at the words in the claims and second for express definitions in the specification. The PTO is unlikely to give a claim a nuanced meaning based upon other disclosure in the specification. Since an argument based upon a nuanced meaning will in all likelihood create a prosecution history estoppel on the issue, it is best to work with the examiner, starting early in prosecution, to arrive at claim language that meets everyone’s needs. Examiner interviews can be invaluable to resolve impasses.4 If the examiner provides a claim construction you disagree with, your task is two-fold, whether the case is at a pre-appeal stage or on appeal. First, you must explain why the examiner’s construction is unreasonable and, second, provide your own construction based upon the principles set forth in Morris.
If it is determined that the claims are of the correct scope, a review of the record should be undertaken to ensure all evidence to be relied upon in the appeal has been properly entered and considered by the examiner as the opportunity to present additional evidence once the Notice of Appeal has been filed is also limited. Silence on the part of the examiner does not mean the evidence has been entered. Consideration of the entered evidence by the examiner must also be apparent on the record. Review the electronic record at the PTO and make sure all evidence is showing. If evidence is acknowledged by the examiner but not discussed in any meaningful way, applicant should insist by way of response that the examiner set forth on the record a reasoned explanation why the evidence is not persuasive. Cases forwarded to the PTAB where the examiner is silent in regard to record evidence will, in most cases, result in a remand with the accompanying delay in the merits decision.
iv. References of record
Prior to deciding that an appeal is the appropriate action to take, each reference of record, whether relied upon by the examiner or not, should be considered in light of at least each claim to be separately argued. Relevant prior art is often of record but has not been relied upon by the examiner. A substantial number of remands and new grounds of rejection entered by merits panels are based upon prior art of record not relied upon by the examiner.
v. Non-English language documents
Also be aware that, if the examiner has relied upon a document in a language other than English, the examiner is required to obtain a full text translation of the document prior to the case being forwarded to the Board. A complete translation of any document that the attorney or the examiner rely upon should be obtained as soon as practicable so the relevant facts are of record. The same considerations apply to abstracts of a document being relied upon as evidence by either the examiner or counsel. Most times, the full text or fully translated document makes the examiner’s case significantly stronger or weaker. If the more complete set of facts had been considered earlier in the case, an appeal may not have been needed.
vi. Appeal, RCE or abandon
Sometimes it is difficult to evaluate the true strength of the examiner’s position because examiners (particularly new examiners) may not clearly articulate the basis of a rejection. Despite interviewing the examiner and/or the supervisor, a clear understanding of the rejection may not be possible. It is difficult to advise a client to abandon the application under these circumstances. It is perilous to RCE or refile the application with claim amendments unless there is a clear need to amend or present evidence. Doing so without some assurance this will be convincing to the examiner could create needless estoppels. Thus, guidance from the PTAB in all likelihood will be needed before an examiner removes a rejection.
Also, in advising a client on how to proceed, the timeliness of receiving a Board decision must be considered. The majority of cases received at the Board at this time that are in proper form are being decided within one to two years of the Docket Notice being mailed. Board statistics as to pendency and outcome are available at the Board’s web page at the USPTO web site.5 Thus, the applicant should carefully consider whether an appeal is the better path to pursue rather than file a continuation or RCE. With the appeal, you will receive an appeal conference and, if needed, a decision by the Board. Even if your case is reopened after the appeal conference, you will have moved the case forward because of the appeal conferee’s input. It is not clear that most examiners realistically review the extant rejections anew in a continuation or RCE as there is no input from an appeal conferee at that stage. Also, a Board reversal will result in patent term adjustment. If the appeal does not go in the applicant’s favour, there is the option to appeal to court or to reopen prosecution with the examiner by filing a continuation application.
Appeals are a very useful tool to move forward a case that is caught on the prosecution treadmill. If an applicant has made good use of examiner interviews and written responses to rebut the examiner’s case, then the appeal process may provide the most efficient next step to obtain a patent.
This article was first published by The Patent Lawyer in their May/June 2020 issue.
1 This standard applied by the USPTO has recently been upheld for both prosecution and for most inter partes review in Cuozzo Speed Technologies, LLC v. Lee. (2016) 136 S. Ct. 2131 (USSC).
2 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). The Phillips standard is also used by the ITC. Robert H. Resis and Benjamin Koopferstock. “Supreme Court Confirms Broadest Reasonable Interpretation Allowed in Inter Partes Review and Limits Review of Institution Decisions.” ABA Landslide, Vol. 9, No. 3, January/February 2017.
3 In re Morris, 127 F.3d 1048, 10 (Fed. Cir. 1997) at 1056-57.
4 Consider the potential benefit of processes that may provide an additional interview opportunity, such as the After Final Consideration Pilot, currently extended through September 20, 2020.
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