Tag Archives: Appeal

A Look At The USPTO Backlog Statistics

As the USPTO fiscal year comes to an end on September 30, I thought this would be a good time to review the USPTO backlog statistics. The currently available data reflects the backlogs as of the start of August 2013, and reveals a decrease in the backlog of unexamined applications, a slight decrease in the … Continue reading this entry

USPTO To Waive New Appeal Fee For Appeal Briefs Filed By March 18, 2013

While most stakeholders are focused on the first-inventor-to-file changes to U.S. patent law that take effect on March 16, 2013, some applicants could realize significant cost savings by taking certain actions by March 18, 2013, to avoid the new USPTO fees that take effect on March 19, 2013. Applicants in the process of preparing Appeal … Continue reading this entry

USPTO Changes Post-Notice Of Appeal Patent Term Adjustment Rules

In an August 16, 2012 Federal Register Notice, the USPTO announced final rules that change the way that Patent Term Adjustment (PTA) will be calculated after a Notice of Appeal has been filed. The final rules generally follow the rules that were proposed in December of 2011 and treat “appellate review” for PTA purposes as … Continue reading this entry

A Different Challenge To The Post-Notice Of Appeal Patent Term Adjustment Problem

Deca-Medics, Inc. has filed a complaint in the U.S. District Court for the Eastern District of Virginia challenging a Patent Term Adjustment (PTA) award based on how its patent application was processed after a Notice of Appeal was filed. While I have written about the problem with the USPTO’s interpretation of 35 USC § 154(b)(1)(B)(ii) and the USPTO is … Continue reading this entry

The Rhyme & Reason Behind The USPTO's Proposed Patent Fees

On Wednesday, February 15, 2012, the Patent Public Advisory Committee (PPAC) will hold its first public hearing on the patent fees that the USPTO proposes to charge in accordance with its new fee-setting authority conferred by the America Invents Act. In advance of this meeting, the USPTO released several documents outlining and explaining the proposed … Continue reading this entry

USPTO Publishes Proposed Rules For New Patent Challenges And Outlines New Patent Fees

The USPTO has published non-final versions of its proposed rules for the new “contested cases” created by the America Invents Act (Inter Partes Review, Post Grant Review and Derivation proceedings) on its AIA Implementation website. According to the USPTO, the official Federal Register Notices will be published later this week, on February 9 and 10. … Continue reading this entry

USPTO Proposes To Close Post-Notice Of Appeal Gap In Patent Term Adjustment Rules

In a Federal Register Notice issued December 28, 2011, the USPTO announced that it is considering changes to the Patent Term Adjustment (PTA) rules relating to “appellate review by the Board.” I have written previously about the post-Notice of Appeal gap left by the current PTA rules, and believe that these new proposed changes would go … Continue reading this entry

USPTO Issues New Guidance On New Rejections On Appeal

The USPTO’s final Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals includes new rules relating to new grounds of rejection on appeal, and new guidance on what constitutes a “new” ground of rejection in an Examiner’s Answer. Although the new rules only apply to cases in which a Notice … Continue reading this entry

USPTO Rules Simplify Ex Parte Appeal Practice

On November 22, 2011, the USPTO issued its final changes to the Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals. The new rules will apply to all cases in which a Notice of Appeal is filed on or after January 23, 2012. Here, I review some of the … Continue reading this entry

Federal Circuit Vacates Board Affirmance Found To Rely On New Ground Of Rejection

The recent Federal Circuit decision in In re Leithem highlights what some practitioners believe is a growing problem with decisions from the USPTO Board of Patent Appeals and Interferences: the Board’s practice of “affirming” a rejection based on a new ground of rejection. The court soundly criticized this practice when it vacated and remanded the Board … Continue reading this entry

Federal Circuit Upholds Board's Strict Interpretation Of Appeal Brief Rule

At first glance, the Federal Circuit decision in In re Lovin didn’t appear very interesting. I know that in a Board appeal you need to argue claims separately if you want the Board to give them separate consideration, and I even know that you need to present those arguments under separate subheadings. But as I … Continue reading this entry

Proposed Changes to Patent Term Adjustment Rules--Looking a Gift Horse In The Mouth

On April 6, 2011, the USPTO announced proposed changes to the Patent Term Adjustment (PTA) rules that would award PTA for USPTO delay when an examiner reopens prosecution after a notice of appeal has been filed. While I have written previously about the gap left by the USPTO’s current PTA rules, I am afraid that … Continue reading this entry

Is Pre-Appeal Brief Review Worth The Effort?

The USPTO provided outcome statistics from the Pre-Appeal Brief Review program in the notice of proposed rulemaking for the proposed changes to ex parte appeal practice before the USPTO Board of Patent Appeals and Interferences. The data reveal mixed results, but are encouraging enough to justify the relatively low costs of the program. The Pre-Appeal Brief Review … Continue reading this entry

USPTO Proposes To Simplify Patent Appeal Practice

The USPTO has published proposed changes to the rules governing practice before the Board of Patent Appeals and Interferences. While the proposed changes salvage a few elements from the 2008 "Final Rules" that never took effect, the USPTO plans to rescind that rules package. In its place, the USPTO has proposed a rules package that appears to … Continue reading this entry

Follow the Bouncing Brief

Earlier this week I wrote about the patent-eligibility decision from the USPTO Board of Patent Appeals and Interferences in In re Kelkar. While reviewing the prosecution history of the appeal, I was struck by the number of times the Appeal Brief was “bounced” for failing to comply with one or more requirements of 37 CFR … Continue reading this entry

An Appealing Patent Term Adjustment Issue

Since the Federal Circuit decision in Wyeth v. Kappos, we have been applying greater scrutiny to the USPTO’s interpretations of the Patent Term Adjustment (PTA) statute. While we previously reviewed the USPTO’s calculations to ensure that the USPTO delays and Applicant delays were correctly counted in accordance with the rules, we find ourselves more frequently questioning whether the … Continue reading this entry

More Number Crunching: USPTO Board Statistics

Last week the USPTO unveiled its new “Data Visualization Center” which provides patent application pendency, backlog and examination data in a graphic “dashboard” format. While not as fancy, the Board of Appeals and Interferences also has published graphic data on its workload, with monthly statistics from May 2010 to August 2010. The Board’s data show that its backlog continues to grow … Continue reading this entry