PROSECUTION APPEALS Presented at Webb Co Rehovot

PROSECUTION APPEALS Presented at: Webb & Co. Rehovot, Israel Date: February 14, 2013 Presented by: Roy D. Gross Associate St. Onge Steward Johnston & Reens LLC Stamford, Connecticut, U. S. rgross@ssjr. com

The Story • You are prosecuting a patent application on a chemical composition and method where all of the elements of the claims are known individually, however, the combination is novel and unobvious over the prior art. • You are staring at a Final Office Action where the Examiner has rejected your claims under 35 U. S. C. 103. • The Examiner has said that she believes that your claims are obvious over a combination of the prior art and cites two or more difference references against you in a combination. • What do you do now? How do you further proceed?

Options After a Final Rejection • Conduct an Examiner’s Interview. • File a Response after Final and hope the Examiner enters the amendments made in the Response. • File a Request for Continued Examination (RCE). • File a Prosecution Appeal accompanied by a Pre-Appeal Brief Request for Review. • File a Prosecution Appeal with Appeal Brief. • Abandon Application and/or file a continuation and/or divisional application.

Pre-Appeal Brief Request • Only appealable issues (e. g. , rejections under 35 U. S. C. §§ 101, 102, 103 and 112) are eligible for review. • The Request may include up to five pages of arguments detailing why review is being requested. • After a panel of three PTO personnel reviews the Request, the panel issues one of four decisions: (1) the application remains under appeal because there is at least one actual issue ripe for appeal, (2) the rejection is withdrawn and a Notice of Allowance will be mailed, (3) prosecution is reopened and a new Office Action will be mailed, (4) the Request fails to comply with the submission requirements and is deemed improper. • The Examiner and her supervisor (SPE) may be and typically are on the panel of three PTO personnel.

Pre-Appeal Brief Statistics FY Requests Proceed to the Board (%) Prosecution Reopened (%) All Rejections Withdrawn (%) Defective Request (%) 2006 6, 525 55 37 5 3 2007 7, 240 56 38 4 2 2008 8, 255 59 37 2 2 2009 9, 967 56 39 3 2 2010 12, 019 56 38 5 1

What is a Prosecution Appeal and why is it filed? • A Prosecution Appeal is a formal request by a Patent Applicant to the Patent Trial and Appeal Board (PTAB) to reverse rejections set forth by an based upon the pending prior art in front of the Examiner. • An Appeal can be filed after claims have been twice rejected. • An Appeal is typically filed when an Applicant disagrees with an Examiner’s Rejection and does not want to further amend the claims.

Benefits of filing an Appeal • An Appeal takes the case away from the Examiner and the Appeal is considered by the PTAB. • By filing an Appeal Brief, the Examiner is required to speak with his or her supervisor and conduct an Appeal Conference. This is beneficial when an Examiner is junior. • Sometimes, after filing a Notice of Appeal and/or Appeal Brief, an Examiner may withdraw the rejections and reopen prosecution. • An Appeal is decided by a panel of three Administrative Patent Judges – typically ex-Examiners that are skilled in patent examination. • Fees paid in a First Appeal if Prosecution is Reopened are transferred to a second Appeal.

Disadvantages of filing an Appeal • Claims cannot be further amended during an Appeal. • An Appeal can take over 2 years (more time than an RCE, however there is now a backlog of RCEs at the USPTO). • Appeals typically cost more than filing an RCE and are more complex. • There is a res judicata effect on claims found invalid by PTAB, i. e. a RCE cannot be filed on rejected claims that are not further appealed without new evidence in the record.

Tips Prior to Filing a Notice of Appeal • Conduct an Examiner’s Interview. • File a Response to a Final Office Action within two months after receiving a Final Office Action. • Have a back up plan during appeal (i. e. , file a continuation application, have additional fall back positions and amendments ready if Appeal is unsuccessful).

USPTO Filing Fees through March 18, 2013 Appeal RCE Large Entity $630 Small Entity $630 $315 $0 $0 $1, 260 $630 Minimum Cost (on papers) $1, 260 $630 Maximum Cost (with hearing) $2, 520 $1, 260 Notice of Appeal Brief Reply Brief Request for Oral Hearing RCE $315 Large Entity Small Entity $930 $465

USPTO Filing Fees after March 19, 2013 Appeal RCE Large Entity Notice of Appeal Brief Reply Brief Small Entity $800 $400 $0 $2, 000 $1, 300 $650 $800 $400 $2, 800 Forwarding Request to Board $0 $1, 400 $4, 100 $2, 050 Request for Oral Hearing Minimum Cost (on papers) Minimum Cost (Appeal reaches Board) Maximum Cost (with hearing) Large Entity Small Entity RCE (1 st) $1, 200 $600 RCE (subseq uent) $1, 700 $850

Advisory Action indicates whether amendments after Final considered in Appeal

Appeal Overview Notice of Appeal Notice of Allowance Office Action Issued; Prosecution Reopened Appeal Brief Notice of Allowance Examiner’s Answer Office Action Issued; Prosecution Reopened Reply Brief to Examiner’s Answer If Oral Hearing is requested, Appeal will proceed as follows Request for Oral Hearing Due within 2 mos (no ext available) Notice of Allowance Office Action Issued; Prosecution Reopened Oral Hearing PTAB DECISION • Rejection can be reversed • Rejection can be affirmed in part and reversed in part • New Grounds of Rejection can be asserted Notice of Allowance RCE Filed; Prosecution Reopened

Important Dates During Appeal • File Notice of Appeal by 3 -month deadline or with additional one-month extension fees. • Applicant has two (2) months to file Appeal Brief after filing Notice of Appeal. • Applicant has two months to file Reply Brief after Examiner’s Answer. Simultaneously with filing Reply Brief, Applicant may file Request for Oral Hearing. • Appeal is Docketed at PTAB. • Confirmation of Oral Hearing (Applicant must confirm participation in hearing 21 days after notice of mailing from USPTO). • Conduct Oral Hearing (typically 2 years after filing Notice of Appeal)

What to Do if Appeal Not Successful • File an RCE with amendments to claims or with additional evidence such as an Affidavit under 1. 132 where Board of Examiners “hints” that evidence is necessary – i. e. , by saying “attorney argument is not evidence”) • File a Request for Reconsideration by the PTAB. • File an Appeal of PTAB decision to the Federal Circuit. • File an Appeal to District Court (benefit is that new evidence can be introduced, however, new issues cannot be raised that were not considered in the Appeal).

Appeals Statistics • Number of Appeals - in 2012 12, 433 Ex Parte Appeals received by USPTO. • http: //www. uspto. gov/ip/boards/bpai/stats/process/fy 2012_sep_b. pdf • Pendency of Time – Approximately 36 months from Notice of Appeal • http: //www. uspto. gov/ip/boards/bpai/stats/perform/fy 2012_perform. jsp • Success Rate • http: //www. uspto. gov/ip/boards/bpai/stats/receipts/fy 2012_sep_e. jsp

Appeals Statistics (continued) • What are the numbers of success of appeal per technology unit (2010 through September 2012)? Technology Name Center Affirmed in part Percent Reversed Complete At least Reversal partial reversal 1600 Biotechnology, Organic Chemistry & Pharmaceuticals 286 47 9% 185 35% 44% 1700 Chemical and Materials Engineering 1077 187 10% 677 35% 45% 3700 Mechanical Engineering, Manufacturing and Medical Devices/Processes 651 313 18% 807 46% 64% ---------------------------- Board Totals 5023 1466 15% 3309 34% 49%

SSJR Success in Appeals • SSJR files a very large number of appeals at the US Patent and Trademark Office and is extremely successful in pursuing patents for its prosecution clients. • Fully 87% of appeals that have been filed and resolved in the last four years have been decided in favor of SSJR and its clients. • This translates into the USPTO affirming its Examiner’s rejections about 13% of the time in SSJR appeals and compares very favorably with the Board’s average rate of affirmance which stands at about 50% over the same time period.

OVERVIEW OF US COURT SYSTEM DIRECTED TO PATENT LITIGATION AND APPEALS FEBRUARY 14, 2013 Roy D. Gross

Overview of US Court System for Patents US Supreme Court Federal Circuit District Court Motion for Reconsideration PTAB (Patent Trial and Appeal Board) Litigation Allowed Rejected Patent Application RCE

US Court System (continued) Federal Circuit Appeal to PTAB Inter Partes and Ex Parte Reexamination Reissue Allowed

The End