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Board of Patent Appeals and Interferences Ex Parte Appeal Rules

Board of Patent Appeals and Interferences Ex Parte Appeal Rules. Michael R. Fleming Chief Administrative Patent Judge United States Patent and Trademark Office Roundtable – Ex Parte Appeal Rules of Practice January 20, 2010. Board of Patent Appeals and Interferences. Our Accomplishments

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Board of Patent Appeals and Interferences Ex Parte Appeal Rules

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  1. Board of Patent Appeals and InterferencesEx Parte Appeal Rules Michael R. Fleming Chief Administrative Patent Judge United States Patent and Trademark Office Roundtable – Ex Parte Appeal Rules of Practice January 20, 2010

  2. Board of Patent Appeals and Interferences • Our Accomplishments • Our Challenge Roundtable - Ex Parte Appeal Rules of Practice

  3. Major Accomplishments Ex Parte Appeals Roundtable - Ex Parte Appeal Rules of Practice

  4. Challenge • Provide timely ex parte appeal decisions Roundtable - Ex Parte Appeal Rules of Practice

  5. Provide Timely Decisions Roundtable - Ex Parte Appeal Rules of Practice

  6. Provide Timely Decisions • Why an increase in appeals docketed in FY 2009 compared to FY 2008 of 15,483 compared to 6,385? • Added new status codes to assist with application tracking • Increase in the size of the Corps • Increase in the number of examiner’s answers per examiner Roundtable - Ex Parte Appeal Rules of Practice

  7. Provide Timely Decisions Roundtable - Ex Parte Appeal Rules of Practice

  8. Provide Timely Decisions • Factors contributing to the number of examiner’s answers per examiner (1) Changes in appellate practice • Genuine dispute • Inability of examiner and applicant to understand each other’s position (2) Landmark changes in patent law For example: • KSR Inter. Co. v. Teleflex Inc. • Bilski v. Kappos • Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. Roundtable - Ex Parte Appeal Rules of Practice

  9. Opening statements from participants Roundtable - Ex Parte Appeal Rules of Practice

  10. Topic 1 Should jurisdiction pass to the Board upon filing a notice of appeal (41.35(a))? Roundtable - Ex Parte Appeal Rules of Practice

  11. Topic 2 Arguments to explain Examiner error (41.37(o)). Roundtable - Ex Parte Appeal Rules of Practice

  12. Topic 3 No longer dictating appeal strategy of Appellants: (a) Acceptance of arguments and evidence of record presented; (b) Rule changes include defaults, thereby reducing returns (41.37(f), 41.37(g), 41.37(o)(1), 41.37(r), 41.37(s), 41.37(t), and 41.37(u));and (c) Elimination of summary of invention section and clarifying requirements for claim support and drawing analysis section, thereby reducing returns (41.37(r)). Roundtable - Ex Parte Appeal Rules of Practice

  13. Topic 4 Should the Board have briefing requirements similar to other appellate tribunals (e.g., page limits, jurisdictional statement, table of contents, and table of authorities)? Roundtable - Ex Parte Appeal Rules of Practice

  14. Topic 5 Should the Board allow examiners and/or appellants to present arguments not presented during prosecution? Roundtable - Ex Parte Appeal Rules of Practice

  15. Topic 6 Should examiners be allowed to make new grounds of rejection in an answer (41.39(a)(2))? Roundtable - Ex Parte Appeal Rules of Practice

  16. Topic 7 Should the Board be allowed to enter new grounds of rejection (41.50(d))? Roundtable - Ex Parte Appeal Rules of Practice

  17. Topic 8 Should the rules be more specific as to the Examiner’s requirements for appeal? Roundtable - Ex Parte Appeal Rules of Practice

  18. Topic 9 Should the rule regarding the Director’s sanction powers for appellate matters be more specific (41.56)? Roundtable - Ex Parte Appeal Rules of Practice

  19. Open floor for discussion of other topics Roundtable - Ex Parte Appeal Rules of Practice

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