When, Why and How to Effectively Appeal to the USPTO Board of Patent Appeals and Interferences
The USPTO recently publicized a sharp decline in its patent allowance rate, dropping from above 70% in 2001 to under 55% in 2007. This suggests that appeals to the Board of Patent Appeals and Interferences are required, now more than ever, in order to provide applicants with the full scope of patent protection to which they are entitled. This, in turn, makes it necessary for the patent bar to become fully confident and comfortable in prosecuting appeals under the USPTO's new appeals rules. It should also be noted that no patent agent has standing to appeal to the Federal Circuit, and very few patent attorneys have occasion to do so. But every patent attorney and agent has standing to appeal to the Board of Appeals, and almost all do so frequently in their careers.
With this need in mind, Patent Resources has had a course designed by one of the most capable patent appeals experts in the field. In its debut presentation in October 2008, this course earned a perfect 4.0 overall course rating and a combined faculty rating of 3.96.
This definitive course on appeals practice before the Board was prepared and will be presented by William F. Smith, who, in 2005, completed 19 years of distinguished service as an Administrative Patent Judge on the Board. Bill brings to PRG the wisdom and insights in effective practice before the Board that can only be provided by one who served so long and so effectively as a Board member. Bill will be assisted by his colleague, Joseph Lucci, a seasoned patent litigator who specializes in patent litigation, prosecution, interferences and client counseling.
Among the subjects covered in the course are the following:
- Determining when, during the prosecution of the application, it is prudent to file an appeal, considering the nature of the examiner’s rejection(s) and the legal and technological issues involved (e.g., identifying and appealing inappropriate obviousness rejections in the post-KSR USPTO).
- How to respond to Office actions in a way that will enhance success before the Board.
- Claim construction by the Board.
- The Board’s treatment of Rule 131 and 132 evidence.
- Pre-appeal brief conference requirements and strategy under the USPTO’s new rules.
- How to write an effective brief to the Board, including strategies in presenting facts, arguments and authorities.
- A detailed analysis of each of the required parts of a brief.
- How to deal with the new presumption of correctness of the examiner’s rejection(s), including how to establish examiner error.
- Taking apart the examiner’s answer and writing an effective reply brief.
- Making an effective oral argument at the hearing.
- Reviewing and responding to the Board’s decision, including how to respond to both stated and unstated new grounds of rejection.
- How to avoid winning the appeal and yet – inadvertently – losing the case.
- Further judicial review, i.e., to the CAFC or the U.S. District Court.
- Patent term adjustment issues – how winning or losing the appeal affects your patent term in significantly different ways.