Tag Archives: Board of Appeals and Interferences

Public Comments Criticize USPTO's Proposed Rules For "Routine Discovery," "Patentee Estoppel," and Amendments in Board Trial Proceedings

As I previously pointed out, there are three proposed rules in the USPTO’s patent trial proceedings rules package that raise concerns and should be dropped.  Public comments on these proposed rules were due April 9-10, 2012.  Now that the public has spoken, let’s take a look at what people had to say about these three specific … Continue reading this entry

Time Is Running Out To Comment On Proposed Rules For USPTO Board Patent Trial Proceedings

The deadline for submitting public comments on the USPTO’s proposed rules for patent trial proceedings is next week, April 9 and 10, 2012.  Specifically, public comments on the seven Federal Register notices containing the USPTO’s rulemaking proposals are due as follows: Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review … 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

Tidbits From IPO PTO Day

I was co-chair of last week’s IPO PTO Day conference, and it was a great event. The program included several speakers from the USPTO, including Commissioner for Patents Bob Stoll, Deputy Commissioner for Patents Peggy Focarino, Chief Administrative Patent Judge James Smith, Vice Chief Administrative Patent Judge James Moore, and Administrative Patent Judge Michael Tierney. … 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

Another Board Affirmance Found To Improperly Rely On A New Ground Of Rejection

Barely two weeks after vacating the decision of the USPTO Board of Patent Appeals and Interferences in In re Leithem as being based on a new ground of rejection, the Federal Circuit took similar action in In Re Stepan Co. While the Board in Leithem had relied on different characterizations of the cited prior art references, … 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

USPTO Reweighs 35 USC § 112 and 35 USC § 121 for Single Claim Restriction Requirements

The USPTO Board of Patent Appeals and Interferences is revisiting the balance between 35 USC § 112 and 35 USC § 121, and their interplay in the context of single claim restriction requirements. While many practitioners believe that binding case law decides this issue against the practice of single claim restrictions, the Board appears to … Continue reading this entry

Federal Circuit Reverses Rejection Based On Board Conjecture

The recent Federal Circuit decision in In re Huai-Hung Kao addressed obviousness rejections in three separate patent applications assigned to Endo Pharmaceuticals, Inc. The court affirmed the Board’s rejections in two of the applications, but vacated and remanded in the other application. This article looks at the court’s finding in that application that the rejection … Continue reading this entry

An Ounce of Prevention Can Be Patentable Over A Pound of Cure

In In re Glatt Air Techniques, Inc., the Federal Circuit reversed a decision of the U.S. Board of Patent Appeals and Interferences that held a claim obvious. The decision is remarkable in that it overturned the Board under the deferential "substantial evidence" standard, and found that the USPTO had not even established a prima facie case of obviousness. The court also criticized the Board for dismissing the applicant's evidence of commercial success because it only related to one embodiment of the claims. … 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

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