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Appeal Practice Before Board of Patent Appeals and Interferences Brian E. Hanlon Deputy Director, Office of Patent Legal Administration.

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Presentation on theme: "Appeal Practice Before Board of Patent Appeals and Interferences Brian E. Hanlon Deputy Director, Office of Patent Legal Administration."— Presentation transcript:

1 Appeal Practice Before Board of Patent Appeals and Interferences Brian E. Hanlon Deputy Director, Office of Patent Legal Administration

2 2 BPAI Jurisdiction What do they do? BPAI Structure and Processes How do they do it? Board of Patent Appeals and Interferences (BPAI)

3 3 Jurisdiction (35 U.S.C. 6(b)): Review adverse decisions of examiners (ex parte and inter parte appeals) Determine priority and patentability of inventions in interferences (interferences) Board of Patent Appeals and Interferences

4 4 Governed by: Title 35 of the United States Code (35 U.S.C. 6, 134, 135, 306, 315) Title 37 of the Code of Federal Regulations (37 CFR, Part 41) Board of Patent Appeals and Interferences

5 5 Members of the Board (35 USC 6(a)) Director Deputy Director Commissioner for Patents Commissioner for Trademarks Administrative Patent Judges Board of Patent Appeals and Interferences

6 6 The Administrative Patent Judges (APJs) Each is a lawyer Each is a lawyer Each has a bachelor of science degree in chemistry, biology, physics, or some form of engineering Each has a bachelor of science degree in chemistry, biology, physics, or some form of engineering Some possess advanced technical degrees Some possess advanced technical degrees

7 7 APJs and Patent Attorneys Chief APJ Chief APJ Vice-Chief APJ Vice-Chief APJ ~ 71 other APJs ~ 71 other APJs ~ 21 Patent Attorneys – assist APJs in drafting opinions ~ 21 Patent Attorneys – assist APJs in drafting opinions

8 8 BPAI DIVISIONS and TEAMS Appeals Division Appeals Division Biotechnology Biotechnology Chemical Chemical Electrical Electrical Mechanical and Business Methods Mechanical and Business Methods Trial Division Trial Division Contested Cases Contested Cases Interferences Interferences

9 9 Appeals BPAI reviews the adverse decisions of patent examiners in: BPAI reviews the adverse decisions of patent examiners in: Regular utility, plant, and design applications Regular utility, plant, and design applications Reissue applications Reissue applications Ex parte and inter partes reexamination proceedings Ex parte and inter partes reexamination proceedings Issues on appeal are developed by applicant and examiner before the case reaches the BPAI Issues on appeal are developed by applicant and examiner before the case reaches the BPAI

10 10 Patent Appeal Process Notice of Appeal (by Appellant) Notice of Appeal (by Appellant) Optional Pre-Appeal Brief Conference Request (by Appellant) Optional Pre-Appeal Brief Conference Request (by Appellant) Appeal Brief (by Appellant) Appeal Brief (by Appellant) Examiner’s Answer (by Examiner) Examiner’s Answer (by Examiner) Reply Brief (by Appellant, optional) Reply Brief (by Appellant, optional) Oral Hearing (by Appellant, optional) Oral Hearing (by Appellant, optional) Examiner’s Response to Reply Brief (by Examiner) Examiner’s Response to Reply Brief (by Examiner) Decision (by BPAI) Decision (by BPAI)

11 11 Request For Pre-Appeal Brief Conference Request must be filed with Notice of Appeal. Request must be filed with Notice of Appeal. Request filed before or after the notice of appeal will be dismissed as untimely. Request filed before or after the notice of appeal will be dismissed as untimely. Limited to 5 pages of arguments and cover sheet. Limited to 5 pages of arguments and cover sheet. Should be focused on clear examiner error(s). Should be focused on clear examiner error(s).

12 12

13 13 Total Minimum Time to Docketing: 14 months Total Maximum Time to Docketing: 20 months Patent Appeal Timeline

14 14

15 15 PATENT APPEALS AT BPAI Patent Appeals can be decided On Brief or after an Oral Hearing Patent Appeals can be decided On Brief or after an Oral Hearing In Fiscal Year 2007, BPAI docketed 4,639 new appeals In Fiscal Year 2007, BPAI docketed 4,639 new appeals 3,954 were On Brief 3,954 were On Brief 685 requested an Oral Hearing (Heard) 685 requested an Oral Hearing (Heard) An On Brief Patent Appeal is one where the Appellant wants the decision based on the written record. An On Brief Patent Appeal is one where the Appellant wants the decision based on the written record. A Heard Patent Appeal is one where the Appellant requests to present an oral argument before the panel to make his/her case. A Heard Patent Appeal is one where the Appellant requests to present an oral argument before the panel to make his/her case.

16 16 An Oral Hearing may be in the form of a personal appearance, telephonic presentation, or a video conference via the electronic hearing room. Oral Hearing

17 17 ORAL HEARING PRESENTATION - PERSONAL APPEARANCE For personal appearances: Arrive half hour prior the scheduled Oral Hearing. Arrive half hour prior the scheduled Oral Hearing. A security check is required before permitted to the BPAI Hearing Room Area. A security check is required before permitted to the BPAI Hearing Room Area.

18 18 ORAL HEARING PRESENTATION Upon arrival to the BPAI Hearing Room Waiting Area, parties report to the Hearing Usher to verify their attendance. Upon arrival to the BPAI Hearing Room Waiting Area, parties report to the Hearing Usher to verify their attendance. Hearing sessions normally comprise six sequential oral hearings. Hearing sessions normally comprise six sequential oral hearings. The Hearing Usher informs the respective parties when it is time to enter the hearing room. The Hearing Usher informs the respective parties when it is time to enter the hearing room.

19 19 ORAL HEARING PRESENTATION - TELEPHONIC For Telephonic Hearings, the Appellant is told which telephone number to dial, and when to make the call. The cost of the call is the burden of the Applicant.

20 20 ORAL HEARING PRESENTATION– VIA VIDEO CONFERENCE The arrangements to set up the video conference and the cost involved for the call are the responsibility of the party. The arrangements to set up the video conference and the cost involved for the call are the responsibility of the party. The party appears on a screen in the electronic hearing room and cameras in the hearing room send video of the panel to the party’s location. The party appears on a screen in the electronic hearing room and cameras in the hearing room send video of the panel to the party’s location. In the event that the video connection is not successful, the Oral Hearing is then conducted telephonically. In the event that the video connection is not successful, the Oral Hearing is then conducted telephonically.

21 21 ORAL HEARING PRESENTATION There is a time period of 20 minutes given to make a presentation. Hearing presentations typically are: A general background of the invention A general background of the invention Rebuttal to the particular arguments in the Examiner’s Answer Rebuttal to the particular arguments in the Examiner’s Answer Answers to questions from the panel Answers to questions from the panel

22 22 ORAL HEARING PRESENTATION If the Examiner makes a personal appearance at the Oral Hearing, the Examiner may speak for up to 15 minutes after the presentation by appellant’s representative.

23 23 How Do We Make Decisions? A patent appeal received at the Board is assigned to a panel of 3 judges, with one judge designated as the lead judge. Lead judge reviews appeal and becomes familiar with technological and legal issues, any prior art applied, and any evidence presented.

24 24 How Do We Make Decisions? (cont.) Lead judge presents an explanation of the issues and applied prior art (evidence) to the other two members assigned to the panel. Oral Hearing is conducted (if previously requested by Appellant).

25 25 How Do We Make Decisions? (cont.) Panel reaches conclusions as to the issues in light of the evidence presented and decide the case. Lead judge proceeds to write an opinion consistent with the panel’s determination on the legal issues.

26 26 Factors Considered in Making Decisions Scientific understanding of the invention involved. Scientific understanding of the invention involved. Knowledge of the patent laws, rules, and current case law. Knowledge of the patent laws, rules, and current case law. Legal reasoning in view of the laws, rules, and case law. Legal reasoning in view of the laws, rules, and case law.

27 27 Patent Appeals - Decisions In patent appeals, the Board affirms or reverses the examiner's rejections of claims. In patent appeals, the Board affirms or reverses the examiner's rejections of claims. If there is more than one rejection in an appeal and at least one rejection is affirmed, the decision is affirmed-in-part. If there is more than one rejection in an appeal and at least one rejection is affirmed, the decision is affirmed-in-part.

28 28 The Decision Publication of Board Decisions Publication of Board Decisions Precedential Precedential Binding on Board, Office Binding on Board, Office Procedure for becoming precedential set forth in SOP 2 Procedure for becoming precedential set forth in SOP 2 Informative Informative Best practices Best practices Routine Routine All Published on Board Website All Published on Board Website

29 29 Patent Examiners Board of Patent Appeals and Interferences Court of Appeals for the Federal Circuit U.S. District Court for the District of Columbia U.S. Supreme Court The Appeal Process

30 30 INTERFERENCE BPAI determines the priority of invention between two or more parties

31 31 What Is An Interference? The United States has a patent system under which a patent is awarded to the one who is “first-to-invent” rather than the one who is “first-to-file” a patent application. The United States has a patent system under which a patent is awarded to the one who is “first-to-invent” rather than the one who is “first-to-file” a patent application. A proceeding conducted within the USPTO to decide who is “first-to-invent” is called an interference. A proceeding conducted within the USPTO to decide who is “first-to-invent” is called an interference.

32 32 What Is An Interference? (cont.) Interferences are declared between Interferences are declared between two or more applications for patent, or two or more applications for patent, or a patent and an application for patent; a patent and an application for patent; NOT between two patents. NOT between two patents.

33 33 The Question When 2 parties claim the same or substantially the same invention, who was the first to invent it? This is a question of Priority.

34 34 The Process Begins with a Request by an applicant or examiner in the Technology Center (TC) Begins with a Request by an applicant or examiner in the Technology Center (TC) Consultation between an Interference Practice Specialist (IPS) in the TC and an Interference APJ Consultation between an Interference Practice Specialist (IPS) in the TC and an Interference APJ Declaration of Interference Declaration of Interference Motions Phase Motions Phase Priority Phase Priority Phase Oral Arguments (may be presented in either phase) Oral Arguments (may be presented in either phase) Decisions on Motions and/or Priority Decisions on Motions and/or Priority Judgment Judgment

35 35 Declaration of Interference Officially begins the interference proceeding. Officially begins the interference proceeding. Sent by the APJ handling the interference to all involved parties. Sent by the APJ handling the interference to all involved parties. Defines the initial scope of the interference. Defines the initial scope of the interference. Sets out a projected timeframe and instructions for the proceeding. Sets out a projected timeframe and instructions for the proceeding.

36 36 Motions Phase Purpose is to: Purpose is to: Resolve questions about the scope of the invention at issue; Resolve questions about the scope of the invention at issue; Handle patentability questions; and Handle patentability questions; and Determine if the interference should continue on to priority. Determine if the interference should continue on to priority. Each party can file motions, oppositions to the other party’s motions, and corresponding replies. Each party can file motions, oppositions to the other party’s motions, and corresponding replies.

37 37 Priority Phase Evidence in the form of a written record comprising affidavits and declarations is established. Evidence in the form of a written record comprising affidavits and declarations is established. A record is filed with the Board. A record is filed with the Board. Arguments citing the evidence of record are made. Arguments citing the evidence of record are made. Junior Party must prove its case. Junior Party must prove its case.

38 38 Interference Decisions Interferences are handled by the Interference Section of the Trial Division. Interferences are handled by the Interference Section of the Trial Division. There are 8 APJs on the Interference Section. There are 8 APJs on the Interference Section. A panel of three of those APJs is assigned to each interference. A panel of three of those APJs is assigned to each interference. A lead APJ is assigned to handle interlocutory matters and draft the final decision (judgment). A lead APJ is assigned to handle interlocutory matters and draft the final decision (judgment).

39 39 Interference Decisions (cont.) The panel: Reviews the record (evidence and arguments) submitted by each party. Reviews the record (evidence and arguments) submitted by each party. Determines whether the Junior Party has proven an earlier date of invention. Determines whether the Junior Party has proven an earlier date of invention. Decides any issues deferred from the motions phase. Decides any issues deferred from the motions phase. Renders judgment. Renders judgment.

40 40 BPAI Website Provides a wealth of information Provides a wealth of information to the public on: to the public on: Procedures Procedures Rules Rules Decisions Decisions Statistics Statistics Contact Information Contact Informationhttp://www.uspto.gov/web/offices/dcom/bpai/index.html

41 41 QUESTIONS?


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