Application can be appealed 1) for appealable issues and 2) when twice rejected

This is the first of a series of posts that goes over the ex parte appeal process in patent prosecution. At https://anticipat.com, we are finding tremendous value from analyzing appeals decisions at the PTAB. Here, we go over the standing requirements for when an application is eligible to be appealed. In short, there must be an appealable issue (instead of petitionable) and the application must be twice rejected.

The first distinction that must be made is issues of appeal versus issues of petition. In general, an objection is petitionable whereas a rejection is appealable. However, when the objection is “determinative of the rejection,” the matter may be addressed by the Patent Trial and Appeal Board (PTAB). An example of this a new matter objection for the specification with a Section 112 rejection for the claims. Both can be decided by the Board if the new matter objection is determinative of the Section 112 rejection.

Some matters that are petitionable and not appealable include the following:

  • A requirement for restriction or election of species
  • Finality of the office action
  • Non-entry of amendments
  • Holdings of abandonment
  • Designation of Examiner’s answer as new ground

If the issue is indeed an appealable issue, the next question is whether that rejection has been applied twice.

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Timeline image attributed to Fitch, Even, Tabin & Flannery LLP

In general, once an application is twice rejected, it is eligible to be appealed. This standard comes from a codified rule: “Every applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the [Patent Trial and Appeal] Board (PTAB) by filing a notice of appeal . . . ” 37 CFR 41.31. 

Based on the wording of the rule, one might see some ambiguity as to whether the exact claims must be rejected twice to be eligible for appeal. But there is no such exactness requirement, as established in a precedential Board decision Ex Parte Lemoine, 46 USPQ2d 1420 (Bd. Pat. App. & Inter. 1994). So as long as an application has been rejected twice, it is eligible to be appealed. See MPEP §1204.

And the rejection is not limited to only be for the exact same application. If any claim was rejected in a parent application, and the claim is again rejected in a continuing application, that continuing application is eligible for an appeal. See MPEP 1204(II). This is supported by the same Lemoine decision.

Stay tuned for updates for other interesting information on the timeline of the appeal process.

Business methods making comeback on appeal at the Board–Citing Berkheimer PTAB panel holds Examiner must show evidence

We have previously reported on the very low reversal rates of abstract idea rejection within tech center 3600, home of business method art. Indeed, over the past few months, the reversal rate has been about 12%, as shown on the Anticipat Research database. But the Federal Circuit has recently pushed the Alice test closer toward patentees, and the Board appears to be following their lead. This is shown in a pair of recently-decided appeals involving business method applications.

In Ex parte Bhogal (PTAB Mar. 19, 2018), the Board found that the claimed method recited more than the alleged abstract idea by “adding a specific limitation other than what is well-understood, routine and conventional in the field.” The Board acknowledged that the claims at issue, like most business method claims, recites generic computer, network and Internet components. But citing Bascom, panel noted that the inventive concept can still be found in the non-conventional arrangement of these pieces.

Here, the appellant had argued that a claimed rendering order prioritization technique is not well-understood, routine, or conventional. The Board found this argument persuasive, noting that the Examiner did not set forth with sufficient specificity or provided any finding that this claimed technique is routine, conventional or well-understood. Importantly, the panel cited to Berkheimer v. HP Inc., No. 2017-1437, slip op. at 14 (Fed. Cir. Feb. 8, 2018) for the proposition that “[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.” Without such a factual finding by the Examiner, the Board found that the rejection was improper and reversed.

It is interesting to note that the Berkheimer Federal Circuit decision very recently issued: February 8, 2018. We have seen Board panels quickly adopt Federal Circuit in the past, as reported here. So the Board appears to be going out of its way to use the decision in its analysis. This may signal that the Board is eager to make patent-eligibility holdings at trial consistent with examination.

In another appeal decided the previous day, Ex parte Hoff (PTAB Mar. 16, 2018), the Examiner had argued that there is no requirement to provide “documentary evidence to demonstrate abstractness.” Answer 9. But the Examiner had only looked at the claim elements individually. In response, the Board quoted Bascom that “the inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art.” In view of the Appellant’s explanation of the effect of coordinated claim elements, the rejection does not sufficiently establish that the combined activity of various claim elements, as identified by the Appellant, fails to constitute significantly more than the abstract idea itself.

Both decisions involved applications with claims that have generic, conventional hardware that individually were not inventive. But the Board found in both cases that the Examiner had failed to establish on the record that the unique combinations of the elements were merely conventional or routine. Without such findings, the rejections were reversed.

The PTAB will continue to side with Examiners in affirming many abstract idea rejections of business method applications. But the recent reversals show that a compelling argument lies in the novel arrangement of claim elements. This is especially compelling if the Examiner has not established on the record that these elements are conventional or routine.

Anticipat Education Part 5: How to find legal authority relevant for overturning specific rejections

Having the most relevant and current legal authority to advance a particular argument is a time-consuming task. But it is also a very important part of persuasive advocacy in patent prosecution. With Anticipat, we channel PTAB decisions to do much of this work. Anticipat Analytics shows you relevant legal authority (e.g., case law, Guidelines, and MPEP support) that the Board relies on in overturning specific rejections.

The legal authority that the Board relies on to overturn a particular rejection in a given tech center can relevant for responding to a pending Office Action. If it worked on appeal in a related case, that authority might be good to look at in your case. And it isn’t only relevant for a case that you are appealing–it can be persuasive when working with your Examiner.

To understand how to use legal authority on Anticipat Analytics, a little bit of background first. Legal authority goes hand in hand with the corresponding argument. We previously explained how Anticipat Analytics breaks down the most common arguments used by the Board in overturning a particular rejection. The legal authority goes a step further by showing the legal authority relied on in making this particular reversal.

Let’s take as an example an application that has an abstract idea rejection under Section 101 – Patent-ineligible subject matter. Looking up this application in the input field, the abstract idea tags listed are “Step 1”, followed by “Step 2,” then followed by “prima facie case.”

The most common tag for abstract idea is “Abstract Idea – Step 1.” This means that when the Board is reversing abstract idea rejections, most often it does so in step 1 of the Mayo/Alice framework. Within step 1, which legal authority does the Board cite to support its reversal? This is where the legal icon to the immediate right of the tag comes into play.

The Examiner column shown above has the most relevant tags and authority to an application (e.g., they represent Board decisions that have overturned this specific Examiner). But they also have the smallest sample size. The next column, art unit, has more decisions. It provides all the decisions (and legal authority) for this art unit.

The next column, tech center, has even more decisions and legal authority.

Finally, the right-most column displays all the tags for this specific tag. This will provide all the legal authority Board decisions.

This legal authority icon immediately to the right of the abstract idea text is clickable, which reveals the full list of legal authority for step 1 in this tech center. When the legal authority icon is clicked, here is an image of the popup that shows.

Having the relevant legal authority for specific arguments used by judges can help guide strategy in what is persuasive.

Please reach out to us with any questions or comments. We’re standing by for any questions or comments.

Anticipat Team

The appeal outcome is one of the most telling metrics for patent prosecution analytics. Here’s why

Big data is slated to revolutionize all aspects society, and patent prosecution is no exception. But because of the complexity of patent prosecution, insights from big data must be carefully considered. Here we look at why appeals outcomes are one of the most telling metrics: it shows good insights with few misleading explanations.

Because much of patent data is publicly available, some companies are amassing troves of patent data. And some metrics that suggest insight are relatively easy to calculate.

Take the allowance rate. You can compare an examiner’s total granted patents to the total applications and voila. In some circles a high allowance rate is a good thing for both examiner and applicant. Under this theory, an Examiner with a high allowance rate is reasonable and applicant-friendly. On the same token, a law firm with a high allowance rate is good. This theory also holds that an examiner or law firm is bad because of a low allowance rate.

Another metric is the speed of prosecution. Take the average time it takes to grant an application either in months, office actions, and/or RCEs. Under a theory on speed, an examiner or law firm with a faster time to allowance is better.

While these theories could be true in certain situations, there are confounding explanations that arrive at the opposite insight. In sum, these are woefully incomplete insights for three reasons.

First, these metrics incorrectly assume that all patent applications are of the same quality. By contrast, examiners are assigned patent applications in a non-random manner. The same applicant (because of the similarity of subject matter) will have a large proportion of applications assigned to a single Examiner or art unit. This means that related applications from the same applicant (drafted with the help of counsel) can have very high quality or very low quality applications. Related low-quality applications can suffer from the same problems (little inventiveness, lack of novelty, poorly drafted applications) that is not dependent on the examiner. So an examiner, through no fault of his own, can get assigned a high percentage of “bad” applications. In these cases, a low allowance rate should reflect on the applications–not the examiner.

Correspondingly, clients of some law firms instruct to prosecute patent applications in a non-random fashion. Especially for cost-sensitive clients, some firms are assigned very specialized subject matter to maximize efficiency. But not all subject matter is equally patentable. So even when a law firm has a low allowance rate, it often times does not mean that the firm is doing a bad job. By contrast, the firm could be doing a better-than-average job for the subject matter, especially in light of budget constraints given by the client.

This non-random distribution of patentable subject matter undermines use of a bare allowance rate or time to allowance.

Second, the allowance rate or allowance time metrics likely show a poor quality patent. That is, one job of patent counsel is to advocate for claim breadth. But examiners will propose narrowing amendments–even if not required by the patent laws–because it makes the examiner’s job easier and the examiner does not want subsequent quality issues. So often times, a quick and easy notice of allowance merely signifies a narrow and less valuable patent. Often times, office actions include improper rejections, so a metric that shows a quick compromise can show that the law firm isn’t sufficiently advocating. Thus, using these metrics to evaluate good law firms could be telling you the opposite, depending on your goals.

Plus, getting a patent for the client is not always best serving the client’s needs. Some clients do not want to pay an issue fee and subsequent maintenance fees on a patent that will never be used because it is so narrow and limiting. So it’s a mark of good counsel when such clients are not given a patent just because a grant is the destination. The client is ideally brought in to the business decision of how this patent will generate value. The counsel that does this, and has an allowance rate that drops because of this, unfairly is portrayed as bad.

Third, these metrics lack substantive analysis. Correlating what happens with patent applications only goes so far without knowing the points at issue that led to the particular outcomes. Some applicants delay prosecution for various reasons using various techniques including filing RCEs. There are legitimate strategies that are benefitting the client in doing so.

All this is not to say that such metrics are not useful. They are. These metrics simply need a lot of context for the true insight to come through.

In contrast to the above patent prosecution metrics, Anticipat’s appeal outcome very directly evaluates relevant parties in substantive ways. The appeal outcome metric reveals what happens when an applicant believes that his position is right and when the examiner and his supervisor think that he is right. In such cases, who is right? The parties are forced to resolve the dispute with an independent judge panel. And because getting to such a final decision requires significant time and resources (eg filing briefs and one or more appeal conferences that can kick out cases before reaching the board), the stakes are relativity high. This weeds out alternate explanations for an applicant choosing to pursue an appeal. Final decisions thus stem from a desire and position to win a point of contention that the Examiner thinks he’s right on–not a whimsical exercise. And tracking this provides insights into the reasonableness of Examiner rejections and how counsel advises and advocates.

The appeal metric helps to evaluate the Examiner because if overturned on certain grounds of rejection (say, more often than average), this means something about the examiner and his supervisor’s ability to apply and assess rejections. After working with an examiner, there can come a point when the examiner will not budge. The PTAB then becomes the judge as to whether the Examiner is right or wrong. This same analysis works at evaluating whole group art units or technology centers.

With Practitioner Analytics, you can see the reversal rates of specific Examiners, art units, tech centers, but you can also look at the specific arguments used that have been found to be persuasive at the Board. This means that if you are dealing with a specific point of contention, say “motivation to combine” issue of obviousness, you can pull up all the cases where the PTAB overturned your examiner based on this point. The overall reversal rate and specific rationales can both validate that the Examiner is not in line with the patent laws and rules.

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The appeal metric also helps evaluate counsel because it shows the results of when counsel feels that their position is right even when the examiner will not budge. If counsel wins on appeal, this metric confirms the counsel’s judgment and their ability to make persuasive arguments in briefs.

Even a ninja can generate allowance rate metrics. But the savvy patent practitioner looks for more context to guide prosecution strategy. Insights from the data that are carefully analyzed avoid counter-intuitive explanations.

Is an appeal an underutilized patent prosecution procedure? Yes

In prosecuting a patent application, an appeal is not always the best option. But it also isn’t that bad an option. Currently, about 1-2% of applications go up for appeal. Based on the advantages that an appeal can provide, as well as the diminishing drawbacks, this low percentage of appeals means that many practitioners may be losing out. Here, we organize the eight advantages that appeals provide (either early in prosecution or late), as taken from previous blog posts.

Appeals help minimize unnecessary prosecution history estoppel – https://anticipat.wordpress.com/2018/01/30/how-appeals-can-stop-examiner-tricks-that-needlessly-undermine-patent-applications/

Appealing before an RCE gives you Patent term adjustment (PTA) B-delay regardless of the outcome on appeal – https://anticipat.wordpress.com/2018/01/18/how-appealing-a-patent-application-before-filing-an-rce-can-yield-big-b-delay-pta/

The ex parte PTAB backlog is plunging, meaning one of the biggest reasons not to appeal (speed of resolution) is less prohibitive. https://anticipat.wordpress.com/2017/12/13/the-ptab-ex-parte-appeals-backlog-is-falling-what-that-means-for-you/

Just by filing an appeal brief, you get another set of eyes in an appeal conference, giving you a chance that your application gets allowed or prosecution reopened even before a final decision from the Board – https://anticipat.wordpress.com/2018/02/12/appeal-conferences-can-advance-prosecution-by-giving-your-application-a-fresh-set-of-eyes/

Appealing an application generally is correlated with a more valuable patent. https://anticipat.wordpress.com/2017/11/28/does-appealing-a-patent-application-lead-to-a-more-valuable-patent/

Recent fee increases affected RCEs more than appeals. https://anticipat.wordpress.com/2017/11/15/uspto-increases-fees-for-ex-parte-appeals-less-than-initially-proposed-thanks-to-aipla-and-ipo/

You can recoup PTA C-Delay for entire appeal pendency when at least one claim is found not unpatentable on appeal: https://anticipat.wordpress.com/2017/11/03/will-you-get-c-delay-patent-term-adjustment-after-your-appeal/

Appealing to technically and legally trained judges can get your rejections overturned if your examiner is just not getting it. The high reversal rates may be higher than you think. https://anticipat.wordpress.com/2017/08/23/update-on-ex-parte-ptab-appeals-reversal-rates-high-reversal-rates-maintained-except-for-101-nonstatutory-rejections/

Are appeals underutilized? Perhaps. But some firms/companies are very strategic with appeals. They understand the value appeals give to their clients/themselves. More to come on that later.

 

 

Appeal conferences can advance prosecution by giving your application a fresh set of eyes

In filing a patent application at the USPTO, an applicant cannot choose its Examiner. Nor can it typically switch to a different Examiner once assigned. And since not all Examiners are equally agreeable or reasonable, being stuck with an Examiner sometimes puts the applicant at a serious disadvantage.

Two different appeal conferences provide applications with another set of examiner eyes. Here, we show that these fresh sets of eyes can have meaningful impacts on prosecution despite any built-in biases. This can happen even before the appeal reaches the PTAB judges’ desk.

The first procedure, pre-appeal brief request for review, is a relatively quick and inexpensive way to resolve “clear errors” in rejections. This brief is limited to 5 pages and is filed at the same time as filing a Notice of Appeal, with no extra fee for filing the request. A panel of three Examiners assesses the merits of the request for review, which guarantees that at least one examiner beyond the immediate examiner and his/her supervisor look at this application.

One might suspect that pre-appeal conferences should be ineffective because two of the three examiners on the conference may already be predisposed against the applicant’s position. That is, the examiner who issued the most recent Office Action typically will not admit that his work product is faulty. Nor will the examiner’s supervisor, especially when the working examiner is junior and the supervising examiner has been involved in overseeing the Examiner’s work. So common wisdom would suggest that a third Examiner, even if on the same side as the appellant, would have a hard time winning over the other examiners.

But these pre-appeal brief requests for review have significant effects on the state of prosecution of the application. One study showed that 6% result in a notice of allowance and 33% prosecution gets reopened (see www.ipwatchdog.com/2015/07/21/efficacy-pre-appeal-brief-conference-program/id=59937/). This means that almost 40% of the time the conference found that the Examiner’s Office Action was defective in some way.

Next is the appeal conference. Here, similar to the pre-appeal request for review conference, three examiners meet to evaluate the application in light of the appeal brief. Interestingly, a study showed that 19% receive notices of allowance after appeal brief. And 21% of these cases have prosecution reopened with an Office Action. (see www.ipwatchdog.com/2016/03/21/ex-parte-appeals-quickallowances/id=67297/) This shows that 40% of the time, the appeal conference examiners did not feel comfortable sending this appeal to the Board.

These data show that even before having patent judges at the PTAB give an application a fresh look, having other a pair of fresh eyes from examiners leads to meaningful results. The take home lesson is that having another pair of fresh eyes to evaluate an Examiner’s rejections is very important. Then, if necessary, the judges can also give the application a fresh look. That is, if it clears either of the 40% filters.

Practice Tip: Do not recite an abstract idea in claims while merely adding the words ‘apply it’

Alice v. CLS Bank in citing Mayo made one point very clear: stating an abstract idea while adding the words ‘apply it’ is not enough for patent eligibility. This point may seem apparent to patent practitioners who hopefully are not literally reciting abstract ideas in claims and adding “apply it”. But a recent ex parte appeals decision highlights how a more common claim may fall into this same patent-ineligible category.

In Ex Parte Perreault (PTAB Jan. 24, 2018), the Board assessed an extraordinary representative claim for patent-eligibility. This single claim spans five pages of the Board decision, tallying up an impressive 1100-word count. The final clause of the claim recites:

wherein said steps (a)(l)(i), (a)(l)(v), (a)(l)(vi), (b)(l)(i), (b)(l)(v), (b)(l)(vi), and (c) are performed by execution, on a processor of a computer, of computer-readable instructions contained on a non-transitory computer readable medium.

The Board was unconvinced of the appellant’s arguments and instead held that the claim was directed to gathering rules and remedies for each community and then displaying them to a sub-contractor. The fact that the claim recited the equivalent of “apply it” in the final element was no help to the patent-eligiblity of the claim.

The Board instead found that the claim includes neither a technical problem nor a technical solution, but merely the application of an abstract idea on a computer via the Internet. Then the final blow: “We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016).

In conclusion, lengthy claims are not helped by merely reciting generic computer and network language. A final step with a wherein clause clarifying that previous steps are performed on a computer is perhaps a sign that the claim off course from patent-eligibility.

How appeals can stop Examiner tricks that needlessly undermine patent applications

Patent Examiners are tasked with a daunting task of checking each patent application for compliance with all the patent laws and rules. Most importantly, the Examiner must show that the claims are not unpatentable, including being free and clear of prior art. And they must do all this within the time expectations that the USPTO offers.

But sometimes it seems like Examiners are engaged in a sophisticated game of cat-and-mouse. Some Examiner tricks, which aren’t expressly prohibited by the rules and incentives offered by the USPTO, cut corners to make their jobs easier. And some might say that the frequency of these games has increased in recent years. But left unchecked, the consequences of these tricks can undermine applications in serious ways.

To their defense, Examiners are allotted only a limited number of hours in the day to reach the bi-weekly expectation levels (or a bonus for ambitious Examiners). This expectation is driven by a simple formula:

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Source. As an example provided by the USPTO, let’s say that an Examiner works 36 hours a week. If the Examiner is starting out at GS7 in the complex field of satellite communications, this examiner is required to perform enough work to generate about 3.6 production units (or 7.2 counts) every bi-week (72 x 0.7)/27.7. That is the equivalent of 3 Non-Final Office Actions (1.5 counts each), 14 Final Office Actions (.25 counts each), 2 first-time RCEs (1.75 each), or 7 Notice of Allowances (.5 each) per week.

An Examiner drafting three Office Actions in a week would have 12 hours per Office Action. This is not quite two days of work for each application, to perform the search, consider the prior art, and draft the Office Action. No small task, especially with this complex subject matter.

On top of this, Examiners are cautious about allowing cases for fear that an allowed patent application does not meet a patent quality assurance threshold. In this case, an allowed case could get referred back to the Examiner to try again.

With these incentives in mind, it is easy to understand the first examiner trick: cutting corners on a quality first Office Action. Good examiners understand that a good initial prior art search sets the stage for the entire prosecution of an application. It’s best to conduct the best and most thorough search once, right at the get-go, applying the closest prior art references to the invention. Once this prior art search is done well, the Examiner can really just slightly modify the rejection as the applicant attempts to distinguish the claims.

But based on the allotted time given to examiners, it might take an examiner more than a few days to familiarize oneself with the claimed invention, perform the search, consider the prior art and draft the Office Action. Some Examiners cut corners with this initial search, applying references that are easiest to find, but not very related to the invention. But because the references may have snippets that can be arguably broadly interpreted to disclose aspects of the claims, the Examiner applies them and moves on. And because often times applications go through several rounds of prosecution, the Examiner may think to perform a better search down the road, with potentially more relevant prior art. This is bad for applicants for a number of reasons.

For one, it wastes money and time. Some Examiners become attached to their own work product and refuse to see error in the first Office Action. Thus, it can be difficult to persuade the Examiner to withdraw a rejection through argument alone. This behavior is reinforced by the USPTO not granting counts for a Non-Final Rejection do-over. So if claim amendments are not introduced, Examiners–hungry for RCE counts–typically issue a Final Rejection with little change to the original analysis.

Sometimes, Examiners offer to cut a deal where a claim amendment is introduced to distinguish the applied prior art references. Applicants, incredulous at being required to distinguish from very different prior art references, may take this option. But no proposed claim amendment is guaranteed to result in an allowance. Examiners may commit to overcoming the current rejection, but a revised rejection with perhaps a different prior art reference can easily be manufactured.

Thus, “working with” the Examiner may give the applicant false hope, leading the applicant to continue to try different claim amendments without committing to allowance. These Examiner-appeasing amendments carry no guarantee of advancing prosecution, and instead often drag out prosecution even through the RCE process, so that the Examiner can get more counts.

Besides expense and wasted time, each argument and/or clarifying amendment used to distinguish a prior art reference makes up the prosecution history estoppel. This is disadvantageous because it narrows the scope of coverage of the claims during enforcement of the patent. As the Supreme Court made clear in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., an applicant that makes a claim amendment to comply with the Patent laws automatically assumes surrender of the territory between the original claim and the amended claim. This means that there is a presumption of surrendering all equivalents for the particular claim limitation that was narrowed by the amendment. For an application that has many amendments over many Office Action responses, the consequences can be substantial.

The second trick is the examiner requiring narrower claims than is required by the law. Even when an Examiner performs a very exhaustive search in the prior art, there is still no guarantee that a killer prior art reference is just around the corner. That is partially why Examiners will almost always want more narrow claims than are needed to overcome prior art so they can pass a patent quality assurance threshold. In general, the more features and claim elements the better for the Examiner to pass scrutiny. It can be tempting to pursue a strategy that pursues narrower claims to get a quick notice of allowance. But unless an Examiner can show why a more narrowing claim amendment must be made in a prima facie rejection, it is not a legally proper rejection.

The savvy patent practitioner knows that the fewer the claim amendments and the shorter the prosecution history, the better. An appeal early in prosecution (upon receiving a Final Rejection) can shortchange the negative implications of prosecution history estoppel. Rather than distinguishing and amending against a circulating set of unreasonable prior art rejections, the Board can decide the first unreasonable set. And if completely successful (no other grounds of rejection affirmed and no new rejections by the Board), a Notice of Allowance should issue. Plus, with Anticipat Research, you can see the reversal rate for your specific ground of rejection for your specific Examiner, art unit, tech center, etc.

Quit playing games and instead be strategic. That is why appealing can be a good solution.

How Appealing a Patent Application Before Filing an RCE Can Yield Big B-Delay PTA

Patent prosecution has a bevy of procedural options for a wide range of preferences. For those who want to maximize the life of the patent and aren’t impatient in getting the grant, some strategies promote maximum patent term. Here, we discuss how appealing a patent application can promote patent term adjustment (PTA), even if the appeal is unsuccessful.

We recently reported on how a successful appeal (not unpatentable for at least one claim) can result in C-Delay PTA. This gives all the time wasted in getting a favorable disposition from the Board back to the patent’s term. But if the appeal is unsuccessful (i.e., the decision comes back upholding a rejection with respect to all claims), and the application does eventually get granted, B-Delay can still replenish this lost time as PTA. But to do so, it must follow a certain timeline.

In general, B-delay is available when the USPTO does not grant a patent within 36 months. That is, every day over the 36-month mark that it takes to grant your application goes into your B-delay PTA. But B-delay is unavailable for the time after an RCE is filed. This point has implications for deciding when to appeal a decision, especially since the appeal process can be long and since not every appeal will be successful.

Under this approach, appeals are used strategically rather than as a procedure of last resort. Instead of filing an RCE to continue examination, an appeal is filed. Many applicants, do indeed use appeals strategically. If the appeal is affirmed, and if an RCE is filed to continue examination and the application eventually does get granted, then does the

An example shows this approach in action. US Patent No. 9,701,462 was recently issued with a whopping 2,230 days of PTA. The secret to over six years of PTA? Appeals. After receiving a Final Office Action, the applicant straightway appealed. The Board affirmed the Examiner, but introduced a new rejection. Subsequently, the applicant responded with an Amendment. The Examiner responded with a Final Rejection, after which the applicant appealed again. This time on appeal it was affirmed-in-part. Because an RCE was never filed, it qualified for 1231 days of B-delay.

pta b delay

This appeal-before-RCE strategy is difficult to pursue in practice—not a trivial or whimsical exercise. It takes preparation to make sure all the necessary evidence is on the record and that the claims are just the way they should be for appeal (before a Final Office Action closes prosecution). Indeed, you may want to front-load much of the back-and-forth work with the Examiner with at least one interview.

Another difficulty is more psychological. Some examiners may confuse the situation by offering a hope (sometimes a false hope) that prosecution is close to concluding. Then the practitioner believes that just one more narrowing amendment is needed. But is this one little amendment needed to allow the case? Or is it needed to overcome the current rejection? Or will the Examiner not even commit to that one narrowing amendment overcoming the current rejection? Many cases with long prosecution histories are made through a series of small amendments.

However difficult it is to front-load the work at the first response, and however difficult it is to weed through the hopeful assurances of the Examiner, appealing early on can pay off big dividends in the form of PTA.