Continuation Applications, RCEs, Appeals, Petitions, Interferences, Public Use Proceedings, Determinations, and Oppositions (1)
Richard Neifeld (2), Neifeld IP Law, PC, Email:
I. Introduction 5
II. Legal Requirements 5
III. Issues and Approaches 6
A. Continuation Application Practice 6
1. The Definition of a Continuation Application 6
2. Compliance with The Requirements for a Continuation
Application 8
3. Incorporation by Reference to the Priority Applications 9
4. Continuation Application Practice as it Relates to 35 USC 102(e)
Prior Art 10
B. RCEs, and RCEs Compared to Continuation Applications 10
C. Continuation Application and RCE Practice, and Why and When to Use Them 12
1. Extending Compact Prosecution 12
2. Business Considerations Affect Taking Allowed Claims 13
3. Inventorship and Rights Issues 13
4. When Statements Made by the USPTO Suggest Broader Protection May Be Possible 14
5. Targeting Infringers and Interferers in Continuation
Applications 15
6. Division Applications to Claim Withdrawn Subject Matter, and the Related Issues of Requirements for Restriction and Election
of Species 15
D. Appeals to the Board, and Why and When to Use Them 17
1. When a Right of Appeal Exists 17
2. Appeal Procedure 18
3. Appeals Receive a Heightened Level of Scrutiny 19
4. Structuring Issues, Arguments, and Claim Groupings in an Appeal Brief 19
5. Structuring a Reply Brief 22
6. Whether to Request an Oral Hearing 22
E. Strategy Regarding Prosecution in View of Rights to Continued Prosecution and Appeal 23
1. Advantages of Appeal Over Continued Examination 23
2. Setting up an Application for Appeal 24
F. Petitions, and Why and When to Use Them 25
G. Interferences, and Why and When to Use Them 26
1. Overview of Interference Law and Procedure 26
2. The Direct and Immediate Impact on ex Parte Prosecution Caused by the Decision in Winter and its Progeny 26
3. The Authority for Interferences, 35 USC 135(a), and Modern Interference Practice 27
4. 35 USC 135(b) - Statutory Bars 29
5. 35 USC 135(c) - Settlement Agreement Filing Requirements 29
6. Advice Regarding Interferences 30
H. Public Use Proceedings, and Why and When to Use Them 31
I. Determinations, and Why and When to Use Them 32
J. Oppositions - The Wave of the Future? 32
IV. Key Concepts and Strategies 33
A. Application to the Course's Fact Pattern 33
B. General Points 34
V. Conclusion 35
The procedures available in the USPTO are tools that should be at the disposal of your clients. This paper reviews the following procedures and it provides some advice regarding when to use them: continuation applications, RCEs, appeals, petitions, interferences, public use proceedings, determinations, and oppositions.
This section briefly summarizes each of the procedures noted above and identifies the USPTO's authority for the procedures.
Filing a continuation application is a mechanism allowing an applicant to pursue, in a subsequent application, claims supported by a disclosure filed in an earlier application. Continuation application practice is the national species of the genus or rights referred to as priority rights. Authority for priority rights is derived from the Paris Convention Article 4, PCT Article 8, EPC Articles 87-89, and in the United States from 35 USC 119-121 and 365. In addition, the first paragraph of 35 USC 112 defines the substantive requirement for a 35 USC 112 second paragraph claim to actually be entitled to a right of priority to an earlier filing date. Regulations governing the right of priority include 37 CFR 1.55 for claims for foreign priority and 37 CFR 1.78 for claims for domestic priority.
A Request for Continued Examination (RCE) enables an applicant to purchase additional examination from the examiner when the examiner would not otherwise provide further examination of the application. Authority for RCEs is derived from 35 USC 132(b). 37 CFR 1.114 defines the regulatory requirements for requesting a continued examination.
A petition is the formal mechanism for requesting almost any action not subject to appeal. Petitions provide a mechanism for correcting procedural improprieties that may occur in the course of prosecution. Authority for petitions generally derives from the due process clause of the Constitution, the Administrative Procedures Act (APA), 5 USC 701 et seq., and also 35 USC 2(b)(2)(A). 37 CFR 1.181-813 are the regulations generally governing procedures and requirements for petitions.
An appeal to the Board of Patent Appeals and Interferences (BPAI, or Board) is a procedure for contesting adverse patentability determinations made by the examining corps (rejections of claims in ex parte application proceedings and decision favoring patentability in inter partes proceedings). Authority for appeals derives from 35 USC 134. 37 CFR 1.191-198 define the regulatory requirements for ex parte appeals.
An interference is an inter partes proceeding to contest various claimant's right to claims defining the same patentable invention. Authority for interferences derives from 35 USC 135(a). 37 CFR 1.601 et seq facially define the regulatory requirements relating to interferences.
A public use proceeding is a mechanism for third parties to produce evidence of a 35 USC 102(b) statutory bar against claims in a pending non-allowed unpublished patent application. Public use proceedings are similar to interferences in that they are intended to permit introduction of non self authenticating evidence. For that reason, they invoke the USPTO's rules relating to evidentiary issues. The USPTO's authority for public use proceedings derives from its inherent authority, as opposed to express statutory authority. Public use proceedings are governed by 37 CFR 1.292 and 37 CFR 1.671 et seq.
Determinations are Board proceedings that provide a mechanism for inventors of certain inventions to contest decisions of the government to take title to the corresponding patents. Authority for determinations are provided by 42 USC 2182 and 2457.
As contemplated, an opposition proceeding would be a post grant proceeding in the USPTO allowing people to challenge the validity (and possibly enforceability) of claims in an issued patent. The USPTO currently has no authority to hold oppositions, but it may be granted that authority in the near future.
A. Continuation Application Practice
1. The Definition of a Continuation Application
There is no statutory definition of "continuation application." The term "continuation application" derives from custom and usage, and its meaning is defined in the case law. Transco Products Inc. v. Performance Contracting Inc., 38 F.3d 551, ___, 32 USPQ2d 1077, 1081-2 (Fed. Cir. 1994) contains a historical review and definition of "continuation application," stating that:
Section 120 appeared in the statutes for the first time in the Patent Act of 1952. Prior to 1952, continuing application practice was a creature of patent office practice and case law, and section 120 merely codified the procedural rights of an applicant with respect to this practice. See Racing Strollers, Inc. v. TRI Indus., Inc., 878 F.2d 1418, 1421, 11 USPQ2d 1300, 1302 (Fed. Cir. 1989); In re Hogan, 559 F.2d 595, 603, 194 USPQ 527, 535 (CCPA 1977); In re Henriksen, 399 F.2d 253, 258-260, 158 USPQ 224, 227-29 (CCPA 1968). Before section 120 was enacted, the Supreme Court noted that a continuing application and the application on which it is based are considered part of the same transaction constituting one continuous application. Godfrey v. Eames, 68 U.S. 317, 325-26 (1864).5 The legislative history of section 120 does not indicate any congressional intent to alter the Supreme Court's interpretation of continuing application practice. The Court of Customs and Patent Appeals (CCPA), a predecessor of this court, acknowledged that the state of the law regarding continuing application practice had not been changed by the enactment of section 120:
The Supreme Court's explanation illuminates the meaning of "shall have the same effect" and clearly requires that we view appellants' applications as "parts of the same transaction" and "as constituting one continuous application" for the continuing subject matter recited therein.
Hogan, 559 F.2d at 604, 194 USPQ at 535 (emphasis added). Thus, an application is entitled to the benefit of the filing date of an earlier application as to common subject matter. See Weil v. Fritz, 572 F.2d 856, 865 n.16, 196 USPQ 600, 608 n.16 (CCPA 1978); Wagoner v. Barger, 463 F.2d 1377, 1380, 175 USPQ 85, 86 (CCPA 1972); In re Van Langehoven, 458 F.2d 132, 136, 173 USPQ 426, 429 (CCPA 1972); In re Lukach, 442 F.2d 967, 968, 169 USPQ 795, 797 (CCPA 1971); In re Shaw, 202 USPQ 285, 293 (Comm. Pat. 1978).
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5The PTO also recognized this aspect of continuing application practice prior to enactment of section 120. See Ex Parte Hall, 1920 C.D. 56, 57; 277 O.G. 395, 395 (1920) ("A continuing application is one filed subsequently to another, while the prior application is pending, disclosing all or a substantial part of the subject-matter of the prior application and containing claims to subject-matter common to both applications, both being filed by the same inventor or his legal representative."); 2 Walker on Patents Section 184, p. 873, Deller's Ed. (1937). [Transco Products Inc. v. Performance Contracting Inc., 38 F.3d 551, ___, 32 USPQ2d 1077, 1081-2 (Fed. Cir. 1994).]
Moreover, recent versions of the MPEP in section 201.07 restate the definition of "continuation application" as follows:
A continuation is a second application for the same invention claimed in a prior nonprovisional application and filed before the original >prior application< becomes abandoned or patented. *** The applicant in the continuation application must include at least one inventor named in the prior nonprovisional application. The disclosure presented in the continuation must be the same as that of the original application; i.e., the continuation should not include anything which would constitute new matter if inserted in the original application. >The continuation application must claim the benefit of the prior nonprovisional application under 35 U.S.C. 120 or 365(c).<
An application claiming the benefits of a provisional application under 35 U.S.C. 119(e) should not be called a "continuation" of the provisional application since an application that claims benefit of a provisional application is a nonprovisional application of a provisional application, not a continuation, division, or continuation-in-part of the provisional application. [MPEP Eight Edition, Rev 1, February 2003.]
These authorities define a continuation application to mean an application (1) that has a claim to priority to a prior (non-provisional) application, (2) that has continuity in inventorship, pendency, and disclosure with the prior application, and, at least according to the MPEP, (3) that includes no new matter. These definitions do not mean that the inventorship is identical to the prior application, and more importantly, hey do not mean that the disclosure is identical to the prior application. The legal effect on the claims in a continuation application of a 35 USC 120 claim to priority is construed by case law to mean that those claims in the continuation application that have 35 USC 112 first paragraph support in the earlier application are entitled to the benefit of the filing date of the earlier application. Studiengesellschaft Kohle, M.b.h., v. Shell Oil Company, 112 F.3d 1561, 1997 U.S. App. LEXIS 9890, 42 USPQ2d 1674 (Fed. Cir. 1997); cert den'd 1997 U.S. LEXIS 7093 (1997)(" In other words, a claim complies with 35 U.S.C. § 120 and acquires an earlier filing date if, and only if, it could have been added to an earlier application without introducing new matter. See Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1566, 28 USPQ2d 1081, 1088-89 (Fed. Cir. 1993).").
2. Compliance with The Requirements for a Continuation Application
Filing a continuation application includes complying with the 35 USC 120 "specific reference" requirement in to the prior application, in addition to having continuity of inventorship, disclosure, and pendency. At the time of filing a continuation (or division or continuation-in-part) application or shortly thereafter, you must include the statutorily required specific reference to the prior application or applications, and you must do so in the format required for example by the 37 CFR 1.78. After filing, you will receive a USPTO generated Official Filing Receipt (OFR). You should promptly review the listing of priority claims and other information in the OFR, and promptly correct incorrect priority claims. The USPTO currently limits corrections of erroneous priority claims to the longer of 4 months from filing date or 16 months from priority date. Failure to promptly correct priority claim errors will, at a minimum, cost the applicant a large USPTO fee to make the correction. 37 CFR 1.78(a)(3).
A continuation application is subject to almost the same statutory requirements as a non-continuation 35 USC 111 application. Recognize this, and ensure that the statutory requirements are met, particularly those relating to the applicants/inventors. It is easy to ignore the requirements relating to the applicants/inventors in a continuation application. This is because the USPTO recognizes in a continuation application the power of attorney and the inventors' declaration filed in the parent application. Therefore, the prosecuting attorney need not confirm with the inventors' averments required in the declaration against the claims presented in the continuation application. However, the inventors' averments relate to the claims. Therefore, when you file a continuation application that presents claims different from the claims in its priority application, you should check with the inventors to confirm that they agree that the 35 USC 112 second paragraph requirement that they regard as their invention what is now being claimed. You should also check with the inventors to confirm that they believe the inventive entity (named inventors) is correct.
I said that a continuation application is subject to almost the same statutory requirements as any other 35 USC 111 application. This is because there is generally no requirement in a continuation application to update the best mode. Transco Products Inc. v. Performance Contracting Inc., 38 F.3d 551, ___, and n.6, 32 USPQ2d 1077, 1082, and n.6 (Fed. Cir. 1994)("the date for evaluating a best mode disclosure in a continuing application is the date of the earlier application with respect to common subject matter *** a continuing application is entitled to rely on the filing date of an earlier application only with respect to subject matter common to both applications."). The Court in Transco Products Inc. went on to discuss the best mode requirement in continuation-in-part situations. Here, it stated that "However, if a claim ... recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent application ... such a claim is entitled only to the filing date of the continuation-in-part application. MPEP Section 201.11." Transco Products Inc. in n.6. I think this leaves open some loopholes whenever the disclosure of the alleged continuation application differs in any substantive respect from the disclosure of the application to which it claims priority. Accordingly, I suggest checking with the inventors regarding the current best mode prior to filing an application with a disclosure that is not identical to its parent.
3. Incorporation by Reference to the Priority Applications
The doctrine of incorporation by reference provides a mechanism to include as a matter of law in one document the disclosure of the another document. The requirements for an effective incorporation by reference were explained by the Court of Appeals for the Federal Circuit (CAFC) in Advanced Display Systems Inc. v. Kent State University, 212 F.3d 1272, 1281-82, 54 USPQ2d 1673, 1678-80 (Fed. Cir. 2000):
To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents. In re Seversky, 474 F.2d 671, 674, 177 USPQ 144, 146 (CCPA 1973) (providing that incorporation by reference requires a statement "clearly identifying the subject matter which is incorporated and where it is to be found"); In re Saunders, 444 F.2d 599, 602-03, 170 USPQ 213, 216-17 (CCPA 1971) (reasoning that a rejection for anticipation is appropriate only if one reference "expressly incorporates a particular part" of another reference); National Latex Prods. Co. v. Sun Rubber Co., 274 F.2d 224, 230, 123 USPQ 279, 283 (6th Cir. 1959) (requiring a specific reference to material in an earlier application in order have that material considered part of a later application).
It is a good practice to include in the disclosure of the application you are currently filing an incorporation by reference of the disclosure of any priority application. This is so because merely claiming priority does not effect incorporation by reference, and incorporating the priority application by reference is an insurance policy against a defective patent disclosure.
In fact, binding precedent from the CCPA indicates that a priority claim, such as referencing an application as a "continuation" of an earlier application is not sufficient to incorporate by reference the disclosure of the earlier application. In re de Seversky, 474 F.2d 671, 674-5, 177 USPQ 144, 146 (CCPA 1973)(Rich, J.)("To be sure, the statement that an application is a continuation-in-part, or a continuation of another application is in a broad sense a 'reference' to the earlier application, but a mere reference to another application, or patent, or publication is not an incorporation of anything therein into the application containing such reference for the purposes of the disclosure required by 35 U.S.C. 112." Emphasis in the original.)
Even when the disclosures of the continuation application and its priority application are identical, including in the continuation application an express incorporation by reference to the priority application acts as insurance against filing errors in which all intended disclosure is not filed in the continuation application. However, the disclosures of continuation applications and their priority applications are often different, and usually are different when priority is claimed to a provisional application, a foreign application, or multiple applications. In all of these situations, an express incorporation by reference is a savings provision enabling disclosure not expressly appearing in the continuation application, but existing in some priority application, to provide support for claims in the continuation application. See MPEP 608.01(p) for current USPTO policy regarding incorporation by reference.
4. Continuation Application Practice as it Relates to 35 USC 102(e) Prior Art
Prior art effect is the flip side of priority. The 35 USC 102(e) prior art effect of a patent or published application may depends upon its priority claims. However, merely claiming priority to an earlier application does not in an of itself make the disclosure of the earlier application prior art.
First, a priority claim in a patent or published application does not require that the earlier application has the same disclosure as the patent or published application. Therefore, disclosure in the patent or published application is not conclusive evidence that the same disclosure exists in the priority application.
Moreover, an earlier application to which priority is claimed in an issued patent is only available as prior art under 35 USC 102(e) as a result of the priority claim in the issued patent if the earlier application provides 35 USC 112 first paragraph support to a claim in the issued patent. In re Wertheim, 646 F.2d 527, 537, 209 USPQ 554, 563-64 (CCPA 1981)("Additionally, it is at this point in the analysis that §120 enters the picture, for the phrase in §102(e), "on an application for patent," necessarily invokes §120 rights of priority for prior co-pending applications. If, for example, the PTO wishes to utilize against an applicant a part of that patent disclosure found in an application filed earlier than the date of the application which became the patent, it must demonstrate that the earlier-filed application contains §§120/112 support for the invention claimed in the reference patent."). There is a related issue, which is whether support in a priority application for a claim in a published application is sufficient for existence of the publication to make the disclosure of the priority application available under 102(e). This related issue presents an open legal question.
Publication of patent applications largely moots the issues relating to 102(e) availability of priority applications, because those applications become prior art as of their filing date upon their publication. However, the issue exists for older patents and for applications subject to non-publication requests.
B. RCEs, and RCEs Compared to Continuation Applications
RCEs and continuations both generally effect continuation of prosecution. However, they have the following similarities and differences.
Filing a RCE results in continued examination in an application when prosecution is otherwise closed in that application. The impact of a RCE complying with the timing and substantive requirements for a RCE is to reopen prosecution and have a submission considered by the examiner. Any RCE, whether proper or improper, will also act to withdraw any appeal to the Board. In contrast, filing a continuation application does not affect prosecution in the prior application, and filing the continuation application will not act to withdraw an appeal in the prior application. Instead, a continuation application effects prosecution in the continuation application in parallel with any activity occurring in the prior application.
A RCE is only timely if it is filed (1) after prosecution is closed (for example
after an appeal to the Board, a final office action, or a notice of allowance), (2) prior to abandonment, issuance, and (unless subsequently withdrawn from issue) payment of the issue fee, and (3) not while an appeal or civil action is pending. In contrast, a continuation application is timely if it is filed at any time during pendency of the prior application.
A RCE requires a "submission" and a fee. The submission must be something that advances prosecution, including an IDS, an amendment, or new arguments or
evidence in support of patentability. In contrast, a continuation does not necessarily require a submission with the filing advancing prosecution vis-a-vis its priority application. However, claims in a continuing application can be rejected for forfeiture due to the applicants' unreasonable delay in furthering the prosecution towards issuance of any claim. In re Bogese, 303 F.3d 1362, ___, 2002 U.S. App. LEXIS 18789, ___, 64 USPQ2d 1448 (Fed. Cir. 2002)("An applicant's attempt to obtain new claims directed to inventions that he or she believes are fully disclosed and supported in an earlier application, however, is easily distinguishable from appellant's failure to further the prosecution of his application toward the issuance of any claims."). Bogese was an extreme case in which the applicant filed a string of eight continuation applications without substantially advancing prosecution. However, the standard for forfeiture of patent rights stated in Bogese is "failure to further the prosecution of ...[the] application toward the issuance of any claims." It is currently unclear exactly what actions or lack thereof the USPTO and the courts will deem sufficient to be failure to further the prosecution toward the issuance of any claims.
Failure to raise a new issue in a continuation application vis-a-vis the issues raised in the prior application will however result in a first action final rejection. MPEP 706.07(b). If you are forced to file a continuation application to preserve rights and you have no specific instruction how to advance prosecution, consider adding at least one claim to reduce the possibility of the first office action in the continuation being made final.
A RCE does not result in a new application or a new filing date. Therefore, filing a RCE will not entitle an application to the provisions of the American Inventors' Protection Act (AIPA) that key off of application filing dates. (3) AIPA provisions that key off application filing dates include application publication, applicability of patent term adjustment, and treatment under 35 USC 102(e) and 35 USC 103. In contrast, filing a continuation application does result in a new application number and filing date, and filing a continuation application will bring into effect the AIPA provisions that key off the filing date.
Filing a RCE will cut off further patent term adjustment due to pendency exceeding three years. 35 USC 154(b)(1)(B)(i). In contrast, filing a continuation application will likely negate any pre AIPA patent term extension, and it will also eliminate any accrued patent term adjustment and restart the 35 USC 154(b)(1)(A) and (B) clocks for AIPA patent term adjustments.
Filing a RCE does not provide a right to switch examination to withdrawn subject matter. However, the examiner has discretion to switch examination to withdrawn subject matter in response to the filing of a RCE and a request by the applicant to switch examination to withdrawn subject matter. Thus, if the examiner agrees ahead of time to grant your request, you could file a RCE and request that the examiner examine a withdrawn group of claims. In contrast, you can file a division application for withdrawn subject matter as a matter of right.
Filing a RCE in an application under appeal to the Board is treated as a request to withdraw the appeal. MPEP 706.07(h) . If the RCE is defective, it is still treated as a request to withdraw the appeal, but no submission is entered, and the application will be disposed of based upon the status of the appealed claims. That is, the application will be abandoned if no claims are allowed, and the application will be passed to issue if claims are allowed. MPEP 706.07(h) . In contrast, filing a continuation application does not directly affect an appeal pending in the prior application.
The time between filing a RCE and receiving an office action is a few months. In contrast, the time between filing a continuation and receiving a first office action is generally one to two years.
The cost of filing a RCE is the basic application filing fee, whereas the cost for filing a continuation application includes both the basic filing fee and any other required filing fees, such as claim and disclaimer fees.
A RCE retains the application number and filing date, whereas most continuation applications result in a new application number and all continuation applications result in a new legal filing date. Under Continued Prosecution Application (CPA) practice, now applicable only to design applications, the USPTO generates no new application number, but the design application is entitled to the filing as of the date of filing of the CPA. See 37 CFR 1.53(d).
A RCE does not affect the disclosure of an application. In contrast, a continuation application may have a different disclosure than the parent application.
A patent issued from an application in which a RCE has been filed is prior art under 35 USC 102(e) at least as early as the actual filing date of the application. In contrast, an application to which priority is claimed in an issued patent or published application is not necessarily 35 USC 102(e) prior art. Wertheim, supra.
Filing a RCE generally cannot result in a double patenting rejection. In contrast, filing a continuation application can result in double patent rejections between claims in the two applications.
C. Continuation Application and RCE Practice, and Why and When to Use Them
1. Extending Compact Prosecution
United States patent prosecution generally follows a "compact" prosecution model. That is, it is designed to conclude with the examiner's consideration of a response to one office action examining the non-withdrawn claims on their merits. To that end, the Director encourages the applicants to present for examination a set of claims including the broadest claim to which the applicants believe they are entitled down to the narrowest claim for which the applicants are willing to accept a patent. The Director encourages examiners to raise in the first office action examining claims for patentability all issues preventing issuance of a patent. The applicants are supposed to respond to that office action by completely addressing all issues raised by the examiner such that the response places the application in condition for allowance. If the examiner agrees, the examiner should allow the application. If the examiner does not agree and maintains rejections, the application should be in condition for appeal. The appeal should decide the disagreements on patentability between the applicants and the examiner.
In practice, this sequence of events does not always occur. Instead, cost constraints on the applicant, and time constraints on both the prosecuting attorney and the examiner result in imperfect prosecution. As a result, when the examiner closes prosecution (makes an office action final) it may be that: some disclosed subject matter was inadvertently not claimed; some of the examined claims are allowed; none of the examined claims are allowed; all claims have been allowed but in an amended form; not all evidence useful in support of patentability has been filed; and claims may stand withdrawn. In these situations, the applicant may desire to continue prosecution, for example, as opposed to appealing.
RCEs and continuation applications are exception to the compact prosecution model. They both entitle the applicant to continue prosecution toward allowance of subject matter after missing their original chance to get it right. You should consider the RCE and continuation application options whenever prosecution is closed and you need to make a submission to further prosecution. Which type of filing you chose may depend upon both the legal differences discussed above, and also upon business considerations.
2. Business Considerations Affect Taking Allowed Claims
Assume your application has some allowed claims and some rejected claims. If your client wants a patent to issue promptly on the allowed claims, you are limited to filing a continuation for the non-allowed claims. If your client does not want or need a patent to issue rapidly on allowed claims, generally, a RCE is preferable over a continuation application because of the RCEs relatively lower costs, faster turnaround in the USPTO, avoidance of double patenting issues, and its potential to preserve patent term adjustment.
3. Inventorship and Rights Issues
Continuation applications are preferable over RCEs in certain situations where inventorship and rights to inventions are an issue. In these situations, you may want to quarantine claims to subject matter having ownership, licensing, or contractual issues from claims to related subject matter by using different applications.
Invention of even a single claim in a patent results in the patent being co-owned. Ethicon Inc. v. United States Surgical Corp. , ___ F.3d ___, ___, 45 USPQ2d 1545, 1548 (Fed. Cir. 1998)("Furthermore, a co-inventor need not make a contribution to every claim of a patent. See 35 U.S.C. Section 116. A contribution to one claim is enough. See SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 888, 8 USPQ2d 1468, 1476 (Fed. Cir. 1988). Thus, the critical question for joint conception is who conceived, as that term is used in the patent law, the subject matter of the claims at issue."). Therefore, any possible inventorship of a claim not clearly owned by your client is a good reason to place that claim in a separate application from other applications.
Special situations also exist when related inventive subject matter exists, and only some of the related inventive subject matter is subject to terms of a Non-Disclosure Agreement (NDA) or a Joint Development Agreement (JDA). You may want to file different applications or continuation applications separating claims having contractual limitations defined in the agreements from claims which are not so limited.
If you file a non-provisional application containing information subject to an NDA and other information not subject to an NDA, that application will eventually be published, and publication may be in violation of the non-disclosure provisions of the agreement. In some situations, it may be feasible to exclude claims and supporting subject matter subject and to a NDA or a JDA from an application to obtain a patent on the related subject matter exclusively owned by your client. It also may be feasible to separately negotiate the right to disclose the subject matter burdened by the NDA/JDA, and then file another application with claims limited to co-owned, licensed, or otherwise confidential subject matter. Keep in mind in these instances the duty of disclosure respecting the close relationships of the applications.
Whenever there is an ambiguity over inventorship, ownership, or other contractual rights, you may want to consider the possibility of segmenting disclosure and claims between related or continuing applications.
4. When Statements Made by the USPTO Suggest Broader Protection May Be Possible
One reason prompting filing either a continuation application or a RCE is that written statements from the USPTO indicate that the allowable subject matter is broader than the allowed claims. These statements most often occur after prosecution is closed, such when an application is allowed, or when a panel of the Board renders a decision on an appeal. For example, either an examiner's reasons for allowance or a decision on appeal reversing rejections of claims may define a set of limitations as distinguishing over the prior art. Such a statement suggests that a claim commensurate in scope with the defined set of limitations will not be rejected over prior art. If no such claims is present, consider adding one.
Moreover, decisions of the Board sometimes include express determinations of issues, such as statements defining what limitations a prior art document does not disclose. Such statements may suggest claims including those limitations. Factual conclusions in a decision of the Board are law of the case, and should be entitled to issue preclusive effect in downstream prosecution. Cf. 37 CFR 1.197(a)("After decision ...[on appeal], the application will be returned to the examiner .... to carry into effect the decision."), and MPEP 706.07(h) . Therefore, if you do present claims as a result of a decision on appeal, those claims should be immune to certain rejections.
In any case, you should review reasoning in communications from the USPTO in connection with allowed claims, reversals of rejections, and the like, to see if they suggest that broader protection is possible, and advise your client accordingly.
5. Targeting Infringers and Interferers in Continuation Applications
One strategy to consider with respect to infringement and interference is to maintain an application pending even when all desired claims are issued in patents. The benefits of maintaining a continuation application pending are that you can promptly present claims tailored to the infringers and interferers.
Maintaining a continuation application pending may increase your chances of stopping the infringement. This is because your patented and infringed claims may have validity or enforceability issues that render them ineffective. In a pending continuation application, you may be able to present claims tailored to the infringement could avoid the problems with the issued claims. Maintaining a continuation application pending is desirable because it would therefore allow you to promptly present claims tailored to the infringement.
Maintaining a continuation application pending would increase your chance of preventing business competitors of your client from obtaining blocking patents. This is because your client's patented claims are most likely ineffective for that purpose. This is because your patented claims probably do not in fact interfere with blocking claims obtained by client's business competitors. Maintaining a continuation application pending allows you to copy claims of business competitors to the extent that you have support in your application. Copying claims in this manner is a pre-requisite for provoking an interference with the competitors' claims, and an interference is a procedure for canceling interfering claims.
Filing a reissue application is an alternative procedure to accomplish the same goals respecting infringement and interference. However, a reissue application is less desirable at least because of the relative delay in examination, limitations due to the error requirement for filing a reissue, and the possibility of resulting intervening rights.
One issue to keep in mind with maintaining an application pending for these purposes is laches with respect to failure to advance prosecution. Repeatedly filing continuation after continuation without advancing prosecution on claims will eventually result in a prosecution laches rejection. Cf. Bogese, supra.
6. Division Applications to Claim Withdrawn Subject Matter, and the Related Issues of Requirements for Restriction and Election of Species
Restriction and election of species requirements normally occur at the beginning of prosecution, prior to an office action examining patentability of claims. These requirements often result in withdrawal of groups of claims such that they will not be examined and no patent will issue from the subject application containing those claims. A so called division application can be filed at any time prior to issuance of the subject application to pursue protection for the withdrawn group of claims. A division application with claims commensurate in scope with the definition of the restricted group is protected from having the patent issuing from its parent application used as a reference against the division patent for any purpose. 35 USC 121.
The effects relating to a division application include timing in obtaining patent protection for the divided subject matter, timing in costs for prosecution, reduction in patent term, the possibility of subsequent withdrawal of the restriction requirement, rule 56 induced complications due to co-pending related applications, and double patenting issues relating to the definition and scope of the restriction requirement vis-a-vis the claims presented in the division application.
Most importantly, delay in filing a division will negatively impact patent term in the division, since term is generally limited to 20 years from the U.S. non-provisional priority date. You should promptly notify the client at the earliest opportunity of the probability that claims will be withdrawn in the pending application, the effects of filing division applications, and the impact of the timing of filing of division applications.
Far too often, imposed requirements do not make sense. If you accede to a non-sensical requirement, your client can later suffer the consequences of lack of clarity in the lines of division, including costs to prosecute division applications, delay in obtaining sought after protection, additional potential for invalidity, and reduced patent term.
In a division patent, claims violating the line of division defined by the requirement in the parent application can result in invalidity due to lack of consonance. Thus, you should ensure that the lines of division are clear. Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, Docket No. 02-1439 (Fed. Cir. November 21, 2003); slip opinion at 16 ("If a restriction requirement does not clearly set forth the line of demarcation, then challenged claims could not satisfy the consonance requirement. Therefore restriction requirements must provide a clear demarcation between restricted subject matter to allow determination that claims in continuing applications are consonant and therefore deserving of §121's protections.").
You should carefully consider whether the requirement makes sense, and traverse when the requirement does not make sense. There are two conceptually different mechanisms to challenge restriction/election of species requirements.
The first mechanism is to argue that the requirement is improper because the different groups of claims are patentably indistinct. This type of argument should rarely if ever be used, since it is an admission that can and should be used against the applicant.
The second mechanism is for you to argue that the requirement is improper because it does not comply with the criteria for a restriction or an election of species, as specified in 35 USC 121, 37 CFR 1.141-146, and MPEP 801-818. This second mechanism does not result in admissions against interest. This second mechanism is appropriate whenever the examiner has not shown that the requirement for restriction/election is proper under the foregoing authorities.
MPEP 803 (August 2001) specifies that restriction/election between two groups of claims is only proper when (1) one group of claims is independent or distinct from another group of claims and (2) a "serious burden" exists on the examiner in examining both groups of claims. Thus, you should review a restriction/election of species requirement to see whether the examiner has shown either that the two groups meet the independent or distinct criteria specified in the MPEP and that the examiner has shown why there is a "serious burden" in examining both groups of claims in the same application. Suitable arguments vary depending upon the facts. Here are some examples.
1. The office action required restriction or election of species without providing any reasoning supporting the requirement. Traverse on the basis that there is no support for the requirement.
2. The office action required election of species. The specification indicates that the alleged species function interchangeably or read on one embodiment. Traverse based upon that fact. Ex parte Muench, 79 USPQ 92, 93 (BOPA 1948)("Mutual exclusiveness is one of the commonly used tests of species. ... We are of the opinion that in addition to the test of exclusiveness the disclosure must be considered, and that the fact alone that the claims are not mutually exclusive does not avail unless there is a disclosure of a single embodiment on which both sets of claims will read, which, in the present type of case, should be a specific example. Stated otherwise, neither of the sets of claims could be amended to include matter from the other without introducing new matter and hence the two sets are mutually exclusive."). On the flip side, keep this issue in mind when initially drafting a specification and claims.
3. The examiner examined and rejected over prior art all claims, and then subsequently required restriction or election of species. Traverse on two basis. First, no serious burden can exist since the examiner has already examined all claims. Second, since the examiner has not withdrawn the rejections of all claims, the examiner's assertion that the claims define patentably independent or distinct groups of inventions contradicts the existence of the rejections of all claims based upon prior art, particularly if all claims are rejected based upon the same prior art. The examiner has taken contradictory positions.
4. The examiner requires restriction or election, and in the office action containing the requirement, classifies each group in the same class and subclass. Traverse on the basis that the examiner has not shown a serious burden exists in examining both groups.
5. The examiner requires restriction and provides reasons therefore, but the reasons either are not commensurate with the scope of claims in the various groups or are not based upon application of the criteria specified in MPEP 806, respecting election of species and restriction requirements. Traverse on the basis that the reasons for restriction rely upon assertions that are incorrect or analysis that is flawed as the case may be.
6. The examiner requires restriction and provides reasons therefore, but each limitation distinguishing a first group from a second group in fact appears in dependent claims in the second group. Traverse on the grounds that no serious burden exists because the examiner would have to search the prior art for the same limitations defining the first group when examining claims in the second group.
7. The examiner requires restriction between claims defining methods of making and products made. Add an exact method claim analog of the pending product claim, and add an exact product claim analog of the pending method claim. By exact analog, I mean a method claim and a product claim wherein the claimed method cannot result in anything but the claimed product. For example, a method of making claim analog may be generated from a product claim by including the word "providing" before each structural limitation, and suitably changing the preamble of the claim to recite a method of making. The restriction is no longer proper. MPEP 806.05(f). Moreover, after adding the foregoing exact analog claims, you are also entitled to have methods of using claims examined in the application. 37 CFR 1.141. Keep in mind that it is preferable to employ this procedure prior to the examiner picking up the case for examination in order to moot the restriction requirement.
D. Appeals to the Board, and Why and When to Use Them
1. When a Right of Appeal Exists
35 USC 134 defines a right of appeal to the Board for any application whenever "any of ... [the applicant's] claims has been twice or more rejected." 35 USC 132 defines a corresponding right to examination of "any claim for a patent." The Board broadly interpreted 35 USC 134 in view of 35 USC 132 in Ex parte Lemoine, 46 USPQ2d 1420, ___ (PTOBPAI 1994)(precedential decision of an expanded panel including APJ Schafer, APJ Meister, SAPJ McKelvey, and CAPJ Stoner) to mean that an appeal right exists and the Board properly has jurisdiction whenever an applicant's claim for a patent is twice or more rejected, stating that:
Considering these sections together, we conclude that "claims" as used in §134 is a reference to the repeated "claim for a patent" as used in §132 rather than a reference to a particular claim "of an application." Under our interpretation, so long as the applicant has twice been denied a patent, an appeal may be filed. So construing the statute, we conclude that applicant's claims for a patent have been twice rejected. Applicant has been denied a patent three times. Applicant, therefore, had the right to appeal and we, accordingly, have jurisdiction.
This rule of law is implemented in 37 CFR 1.191(a)(1) by the statement that "Every applicant ... any of whose claims has been twice or finally (§ 1.113) rejected, may appeal ... to the Board ...." Thus, you should consider the right of appeal to the Board whenever the subject application has been examined and twice rejected.
Filing an appeal requires filing both a notice of appeal and its fee, and then an appeal brief and its fee. 37 CFR 1.191(a)(1) and 192(b). The appeal must be for "the rejections of all claims which the applicant ... intends to contest." 37 CFR 1.191(c). That is, rejections of claims not contested will not be reversed.
The examiner will respond in the normal course to the filing of an appeal brief with one of a notice that the brief is defective and a requirement to cure (37 CFR 1.193(d)), an examiner's answer (37 CFR 1.193(a)(1)), a notice of allowance, and reopening prosecution with a new non-final office action. 37 CFR 1.193.
If the examiner responds with an examiner's answer, the appellant has a right to file a reply brief within a generally non-extendable two month period. 37 CFR 1.193(b).
If the appellant files a reply brief, the examiner must either enter the reply brief or issue an office action reopening prosecution. 37 CFR 1.193(b)(2).
If the examiner issues an office action reopening prosecution after the appellant files either a brief or a reply brief, the applicant must either file a response to the office action or request reinstatement of the appeal and file a supplemental brief. 37 CFR 1.193(b)(2)(ii). No new evidence or amendments are allowed if the applicant requests reinstatement of the appeal. However, requesting reinstatement of the appeal preserves any patent term adjustment due to the appeal. See the decision on that issue on patent term adjustment posted at: http://www.neifeld.com/pta_040504.pdf.
Evidence or amendments filed after appeal generally will not be entered. 37 CFR 1.195 and 116.
The appeals are decided by a panel of at least three Administrative Patent Judges (APJs), as required by 35 USC 6(b). Typically, only three APJs decide each appeal. However, from time to time expanded panels decide appeals, particularly appeals involving controversial issues.
On each issue, a panel may affirm, reverse, remand to the examiner, require the appellant to address a matter, and enter a new ground of rejection. 37 CFR 1.196. Any decision of a panel other than a remand is appealable and considered a final agency action. 35 USC 141 and 146.
The appellant has two months from the date of the decision to request rehearing as to points the appellant believes the panel misapprehended or overlooked in the decision. 37 CFR 1.197(b).
After decision on appeal, the Board returns the file and jurisdiction to the examiner "to carry into effect the decision." 37 CFR 1.197(a). Thus, the decisions of the panel are binding upon the examiner. See the discussion of issue preclusion in section II.C.4, supra.
The appellant can respond to an adverse decision by appealing to the CAFC (see 35 USC 141) or by filing a civil action against the Director to obtain a patent (see 35 USC 146).
The proceeding on the appeal to the Board is terminated by (1) dismissal by the Board of the appeal, (2) at two months from the date of decision on the appeal or decision on rehearing if rehearing was requested, unless the appellant acts under 35 USC 141 or 35 USC 145. In case of an appeal to the CAFC, the proceeding is terminated when the CAFC issues its mandate. In the case of a civil action, the proceeding is terminated when the time to appeal the judgement expires. 37 CFR 1.197(c).
3. Appeals Receive a Heightened Level of Scrutiny
As a general matter, you should note that the applications before the Board may receive a higher level of scrutiny than when before the examining corps. According to APJ Torczon, "a practitioner suspected of misconduct in a Board proceeding is more likely to face a proceeding before the Office of Enrollment and Discipline than a similarly situated practitioner in other kinds of litigation." See page 1 in "Ethical Consideration Before The Board Of Patent Appeals And Interferences," Torczon in proceedings of "PTO Appellate and Interference Practice in the New Millennium Conference" published by IPO (2000). You should of course always make sure that your factual assertions are accurate and that you have fulfilled your duties of both candor and good faith. Thus, you should not have to change behavior when appealing, but do take APJ Torczon's statement as a warning, and act accordingly.
4. Structuring Issues, Arguments, and Claim Groupings in an Appeal Brief
37 CFR 1.192(b) specifies the requirements for an appeal brief. The brief must include sections for each one of: identification of the real party in interest; identification of any related appeals or interferences; status of all claims (pending, canceled, subject to appeal); status of any amendments; summary of "the invention" defined by the claims involved in the appeal; a list of issues involved in the appeal; grouping of claims; reasoning (argument) under a separate section for each issue.
The structure of an appeal brief should generally parallel the sections defined in 37 CFR 1.192(b) to maintain clarity and show compliance with the requirements for an appeal brief. That is, an appeal brief should generally include a heading or subheading corresponding to each sub section of 37 CFR 1.192(b).
Appeal briefs are structurally more complicated than responses to office actions in the following respects. Whereas a response to an office action only has to respond to issues raised by the examiner, an appeal brief must (1) enumerate the issues, (2) respond to the issues, and (3) group the claims such that the panel can "select a single claim from the group and shall decide the appeal as to the ground of rejection on the basis of that claim alone." The panel of the Board will decide the appeal as to all claims in each group based upon its review of a single claim in the group, unless the appellant includes "a statement ... that the claims of the group do not stand or fall together and, in the argument under paragraph (c)(8) of this section,[and the] appellant explains why the claims of the group are believed to be separately patentable." In other words, the appeal brief should list in each group only those claims for which all issues are identical to ease the administrative burden on the APJs in deciding the appeal.
Whereas the grouping of claims may ease the administrative burden on the APJs, it imposes complications on the drafting attorney. This is because your starting material for an appeal brief should be your reasoning (arguments) in your pre-existing response to the rejections. Responses to rejections are most often organized in a manner corresponding to the basis for the rejections imposed in the office action. However, the organization of the response to the office action generally differs from a sequence of claim groupings defined by issues on appeal. That causes a complication in drafting the appeal brief, and causes a complication in defining the issues on appeal.
I see two different types of organizations of an appeal brief that comply with the rules and make sense. The first is to organize the appeal brief arguments in correspondence to how they appear in a response to an office action, and organize the statement of issues in the appeal brief as to the generic basis for rejections. The second is to organize the appeal brief arguments in association with the groupings of claims, and the issues in correspondence with the grouping of claims. The second is very confusing. The first is simpler, and in my opinion preferable. I provide an example below that should clarify these issues.
Assume that an office action rejected claims 1 and 2 as anticipated by reference A, and it rejected claims 3 and 4 as obvious over a combination of references A and B. You file a response traversing, and then the examiner issues a final office action. You decide to appeal.
You might initially think that an appeal grouping of claims would be group 1 defined by claims 1 and 2 and group 2 defined by claims 3 and 4. You also might think that two issues are presented: (1) whether the anticipation rejections are improper and (2) whether the obviousness rejections are improper. However, that is not necessarily the case because that might not group claims according to whether the panel should decide to reverse or sustain all claims of a group based upon a determination with respect to one claim of the group. For the panel to determine whether to reverse or sustain all rejections of a group of claims based upon review of one claim of a group, the factual and legal issues for claims of the group must be identical.
A response to an office action containing the two grounds for rejections noted above would logically proceed to address the anticipation rejections of claims 1 and 2, and then address the obviousness rejections of claims 3 and 4. Assume that your response to the first office action did that, and that you r response made the following types of arguments, and assume that you now decide to repeat these arguments in your appeal brief:
1. Claim 1 is not anticipated because reference A lacks element V defined by claim 1.
2. Claim 2 is not anticipated by reference A because claim 2 depends from claim 1.
3. Claim 2 is not anticipated by reference A because reference A lacks element W defined by claim 2.
4. There is no motivation to modify reference A in view of reference B. Therefore, the rejections of claims 3 and 4 over A and B are improper.
5. The proposed modification of references lacks element X defined by claim 3. Therefore, the rejection of claim 3 is improper.
6. The proposed modification of references lacks element Y defined by claim 4. Therefore, the rejection of claim 4 is improper.
7. The proposed modification of references lack element Z defined by claims 3 and 4. Therefore, the rejection of claims 3 and 4 is improper.
Each of the seven conclusory arguments may include more than one underlying sub-issue involving conclusions of fact and law, such as claim construction issues, the teachings of a reference, legal motivation to combine, incorporation by reference. If you decide to structure the appeal brief listing each of the underlying sub-issues raised in your response, you will have to reorganize the arguments from your response to correspond to each factual and legal sub-issue. You will also have to list those issues. Moreover, since some of the sub-issues, including those relating to arguments 4 and 5, relate to more than one claim, your arguments, if organized along sub-issues and groupings of claims, may be highly redundant. That is, you may have to repeat the same argument, such as argument 4, for claim groups for each one of claims 3 and 4. When large numbers of claims and large numbers of grounds for rejections are involved, this approach is very inefficient.
The alternative approach, which I prefer, is to list the issues as the generic basis for rejections defined by the examiner. In this example, the first issue listed in the appeal brief would be whether the rejections of claims 1 and 2 as anticipated by reference A should be reversed. The second listed issue in the appeal brief would be whether the rejections of claims 3 and 4 as obvious in view of the A and B references should be reversed. The 37 CFR 1.192(c)(8) arguments section of the appeal brief would then consist of copying into your appeal brief your arguments against the 102 rejections and the 103 rejections in the same sequence that they appear in your response to the office action. (As modified by your supplemental response to any additional reasoning appearing in the outstanding office action.) However, you would then identify the groupings of claims as groups 1-4, each group corresponding to one of claims 1-4. Generally speaking, the groupings of any two claims in different groups depend upon whether you have any argument for reversal of all rejections of one claim that includes an argument inapplicable to the other claim. Only those claims should be in the same group for which you have identical arguments such that exactly the same conclusions reached by the panel on those arguments result in the panel reversing as all rejections as to both claims. That is, any two claims for which a different argument exists for any rejection, should not be in the same group. Once your arguments are complete, you will be able to pick out those claims for which exactly the same arguments apply, and define claim groups accordingly.
In fact, I like to include at the end of the argument section of an appeal brief, one additional sub-section for each grouping of claims, and list in each such sub-section the set of conclusions the panel needs to reach that result in all rejections of that group of claims being reversed. This set of additional sections shows, both to you, the examiner, and the panel, that your grouping of claims is proper and accurate.
There is one type of special situation with respect to claim groupings worth special attention. Assume the examiner included a basis for rejection of every claim, but without supporting reasoning. For example, assume all claims in an application are rejected for obviousness-type double patenting based upon a related patent, but the office action contains no reasoning explaining the rejections. Of course, such a rejection is improper, but rejections of this type are common. In this situation, there is no clear way to group claims in an appeal brief, because the factual and legal conclusions required to support or reverse the rejection of each claim are indefinite. In that type of situation, I fall back to the distinction in the claim language for purposes of grouping, and group each claim separately. My reasoning in the brief supporting grouping each claim separately is that the examiner has not made a prima facie case as to any claim, and has not addressed any limitation in any claim. Each claim contains a different set of limitations. Therefore, each claim logically defines a separate group because each combination of limitations provides a separate basis for the rejection to be reversed. This type of grouping is effective whenever you are faced with appealing rejections that lack supporting reasoning. Whenever you note that an office action fails to include a prima facie case supporting rejections, consider this type of grouping on appeal.
A reply brief is intended to allow the applicant to address any new issue raised for the first time in the examiner's answer. Therefore, you should not repeat in the reply brief arguments in your appeal brief. If the examiner elaborated on an issue, and you had not addressed points raised in the examiner's elaboration, you should do that in the reply brief. If the examiner failed to address points or evidence raised in your appeal brief, you should not that in your reply brief.
The simplest way to structure a reply brief is to address each issue raised by the examiner's answer in the sequence it appears.
Filing a reply brief is not mandatory. However, note that extensions of time are generally not available for filing of reply briefs.
An examiner's answer must not contains a new ground of rejection for claim that was pending prior to the filing of the appeal. 37 CF 1.193(a)(2). If it does, you should point that out in the reply brief, and urge the panel to ignore the new rejection, in addition to addressing the rejection on the merits. However, since such a new ground of rejection in an examiner's answer is procedurally improper, you may also have relief via a suitable petition.
6. Whether to Request an Oral Hearing
Judges from the Board, including senior APJ McKelvey and former chief APJ Bruce Stoner have repeatedly noted to attendees of bar association meetings that they recall no instance when an oral hearing that actually helped an appellant's case, and that they recall instances where an oral hearing lost the case for the appellants. They have also repeatedly noted that appeals without an oral hearing receive the same level of scrutiny as appeals with an oral hearing. Requesting an oral hearing may also slightly delay a decision on the appeal.
If your appeal brief is clear and well written, there should be no need for a hearing. Your appeal brief should be clear and well written! Weighing the factors of the APJs guidance and the additional costs incurred by the appellant in having a hearing versus any conceivable benefit, you should think long and hard before requesting an oral hearing.
E. Strategy Regarding Prosecution in View of Rights to Continued Prosecution and Appeal
1. Advantages of Appeal Over Continued Examination
In certain situations, filing an appeal has several legal advantages over continued prosecution via either a RCE or a continuation application.
First, compared to continued prosecution, an appeal limits the prosecution history, thereby limiting possible prosecution history estoppels.
Second, compared to continued prosecution, an appeal cuts off the examiner's ability to impose additional rejections and improve on the reasoning supporting existing rejections.
Third, continued prosecution generally results in loss of patent term adjustment. In contrast, filing an appeal maintains patent term adjustment, and obtaining reversal of all rejections of at least one claims results in additional patent term.
Fourth, compared to taking a patent on narrow allowed claims and filing a continuation application to prosecute the broad rejected claims, an appeal has certain advantages.
Taking a patent on allowed claims and filing a continuation to pursue rejected claims sets up the continuation application for double patenting rejections over the claims in the patent issuing from the allowed application. That in turn is likely to result in loss of patent term adjustment in the continuation application. Thus, the patentee may be sacrificing term on the broader and therefore generally more important claims in exchange for early protection on the narrower and therefore generally less important claims.
Furthermore, prosecution in a continuation application may result in discovery of prior art impacting the already patented claims.
In addition, there is the potential of litigation on the early issued patent, and the complications caused by parallel litigation and prosecution of related subject matter. One of the drawbacks of having a patent application pending on subject matter related to a patent in litigation is the duty to disclose in the pending application. That duty is unwavering such that the patentee litigant will have to disclose in the pending application any document material to patentability to claims in the pending application. Such documents are likely to be relevant to the patent litigation. Adverse parties in patent litigation typically obtain via discovery copies of the files for patent applications related to the litigation. Thus, it is likely that any information the patentee files in the pending application will become known to the adverse parties. If the patentee appealed and obtained a single patent and did not file a continuation application prior to asserting the patent, it would have no duty to disclose subsequently discovered information. In that situation, the patentee be able to avoid divulging relevant information to its opponents. Moreover, litigation often produces material information, and that information must be disclosed to the examiner of any related pending application, such as continuations, thereby complicating patent prosecution.
In contrast to accepting a patent on some allowed claims and filing a continuation application, an appeal provides for patent term adjustment right on all claims, and avoids potential complications of parallel proceedings.
Fifth, appealing can save your client money by cutting off prosecution. This is because a decision on an appeal is likely to be the last paper on the merits in the application.
Accordingly, promptly appealing has significant advantages under current law.
Sixth, at any point while the appeal is still before the examiner, the rejections may be withdrawn and the application allowed. In fact, current USPTO procedure requires a panel of three examiners to review the file upon filing of an appeal brief to determine whether to maintain the rejections. Consequently, a substantial fraction of applications in which an appeal brief is filed result in prompt withdrawal of weak rejections.
2. Setting up an Application for Appeal
Compact prosecution means that the second office action in an applications is generally final. MPEP 706.07(a). Finality generally cuts off the right to amend and present evidence. Therefore, all relevant amendments and evidence should be presented prior to a final office action. Therefore, all relevant amendments and evidence should be presented in response to the first office action. This means that your response to the first office action should thoroughly develop your reasoning in response to each rejection of each claim. One reason to develop your reasoning in response to each rejection of each claim is to help determine backup claims that either avoid the ground for rejection or more clearly correspond to your reasoning. Even when you think that your reasoning is sound and that your claims correspond to your reasoning, keep in mind that it is ultimately what the panel thinks that is determinative. Generally speaking, you should whenever possible not substitute your reasoning for that of the examiner or a panel.
You should also include in your response to the first office action all relevant evidence in support of your assertions. Typically, this evidence includes self authenticating documents such as relevant dictionary definitions, technical or legal publications, and expert declarations. Generally speaking, evidence is much more important at the appeal level than in examination before the examiner. The member of the Board are technically and legally competent. However, they may not have the same background that the examiner has in the sub-field of the claimed invention. Accordingly, they may not know relevant terms of art. Relevant dictionary definitions help define those terms, and provide a basis for the panel to disagree with an adverse meaning assigned by the examiner. Similar considerations relate to self authenticating publications and expert testimony.
Keep in mind that there are differences between properly presenting evidence via declaration and statements made during an oral hearing. Some practitioners believe that an oral hearing is a reasonable mechanism to explain to the panel the underlying technology - as opposed to presenting relevant evidence prior to appeal. It is not.
Statements made at oral hearing are not necessarily part of the record, and therefore do not provide support for a 35 USC 141 appeal. Evidence of record supports both the appeal at the Board level and is of record for any subsequent 35 USC 141 appeal.
Moreover, the panel need not consider assertions of fact not of record, although it has discretion to do so. If the appeal brief is defective in respect to lacking a factual assertion, you might be able to have the panel consider that fact by asserting it at an oral hearing. Cf. Ex parte Thakrar et al., Appeal No. 1996-3277 (1997), at p. 5, posted at: http://www.uspto.gov/web/offices/dcom/bpai/decisions/fd963277.pdf ("However, as pointed out by appellants' counsel at oral hearing, a thixotropic agent is not a viscosity controlling agent."). However, an oral hearing is not a substitute for evidence of record and a proper appeal brief.
The panel can and will rely upon admissions against interest that you make during oral hearing. Cf. Ex parte Iwasaki et al., Appeal 1996-3507 (1996), at p. 7, posted at: http://www.uspto.gov/web/offices/dcom/bpai/decisions/fd963507.pdf ("As conceded by counsel at the oral hearing, this means that dependent claim 2, which calls for selection of the higher damping coefficients to be based on a combination of a substantially zero vehicle speed and a "vehicle attitude change . . . below a preselected degree," fails to further limit claim 1, as required by 35 U.S.C. § 112, fourth paragraph. The same criticism applies equally to the claims that depend on claim 2, i.e., claims 3, 4, 6, and 7. We leave it to the examiner to consider entering a rejection of these claims under § 112, fourth paragraph, following this appeal.").
F. Petitions, and Why and When to Use Them
Petitions address procedural issues, such as actions or requirements of an examiner not subject to appeal, and can invoke the Director's supervisory authority. A petition consists of three parts. A request for specific relief; a statement of relevant facts, and an explanation. The petition may be accompanied by evidence. Petitions in response to an examiner's requirement may not be proper until after the applicant has requested reconsideration and the examiner has repeated the requirement. Petitions not filed within 2 months of the notice or action prompting the petition may be dismissed as untimely. Petitions generally require the 37 CFR 1.17(h) petition fee. The Director shall issue a written decision in response to the petition. 37 CFR 1.181.
In response to a petition, when justice requires, the Director may waive any non-statutory requirement of the rules required to grant the petition. 37 CFR 1.183. The Director may not waive any requirement imposed by statute.
A petition does not toll the clock for responding to any office action or requirement. Accordingly, failure to respond to an action other than filing a petition will generally result in abandonment of the application.
There are bewildering number of situations in which petitions are proper. MPEP 1000.02 et seq. enumerate on the order of 100 different petitionable situations, and they identify which office in the USPTO handles petitions for each situation.
If your petition is denied, you generally have the right to request reconsideration. If on reconsideration you believe the decision violates the Administrative Procedures Act, 5 USC 701 et seq., you have remedy via a civil action against the Director in a district court. See Arnold v. Dudas, 362 F.3d 1338, *; 2004 U.S. App. LEXIS 5513, **; 70 USPQ2d 1311 (Fed. Cir. 2004). To succeed on court, you must show that the decision complained of is:
(A) arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law;
(B) contrary to constitutional right, power, privilege, or immunity;
(C) in excess of statutory jurisdiction, authority, or limitations, or short of statutory right;
(D) without observance of procedure required by law;
(E) unsupported by substantial evidence in a case subject to sections 556 and 557 of this title or otherwise reviewed on the record of an agency hearing provided by statute; or
(F) unwarranted by the facts to the extent that the facts are subject to trial de novo by the reviewing court. [5 USC 706(2).]
It is important to promptly identify and act against procedural errors. Failure to act promptly often results in unnecessary work, such as responding to a requirement or rejection subsequently mooted by a decision on the petition.
Petitions are filed for the purpose of procedural advantage. Petitions contain factual assertions. Factual assertions in petitions are material within the sense of rule 56. General Electro Music Corp. v. Samick Music Corp., 19 F.2d 1405, ___, 30 USPQ2d 1149, 1154 (Fed. Cir. 1994)("Relating to false statements in a petition to make special regarding existence of prior art search"). Beware of making erroneous or vague assertions of fact. Keep in mind your duty to ensure that facts asserted in all papers filed in the USPTO are accurate.
G. Interferences, and Why and When to Use Them
1. Overview of Interference Law and Procedure
Interferences are the most unusual of the USPTO procedures, and by far the most complicated. What I provide below is an overview of the controlling law, current procedures, and then some advice. To put interferences in perspective, note that the Director declares on the order of 200 interferences per year as compared to issuing about 200,000 patents per year. Only a tiny fraction of applications ever get involved in an interference.
2. The Direct and Immediate Impact on ex Parte Prosecution Caused by the Decision in Winter and its Progeny
The meaning of "interference" is not defined by statute. All 35 USC 135(a) states is that, "if in the opinion of the Director" an application and at least one other application or patent interfere, the Director may declare an interference. The meaning of "interference" was judicially defined in Winter v. Fujita, 53 USPQ2d 1234 (PTOBPAI 1999)(expanded panel consisting of Stoner, Chief Administrative Patent Judge, McKelvey, Senior Administrative Patent Judge, and Schafer, Lee, and Torczon, trial section administrative patent judges)(opinion by SAPJ McKelvey), and that meaning was accepted by the CAFC in Noelle v. Lederman, Docket No. 02-1187 (Fed. Cir. January 20,2004), to be a two-way obviousness test. As stated in Noelle v. Lederman:
In order for an interference-in-fact to exist, invention A must anticipate or make obvious invention B, and invention B must anticipate or make obvious invention A, thereby meeting both prongs of the 'two-way' test.
This is a judicial construction of 37 CFR 1.601(n). Winter, supra. 37 CFR 1.601(n) defines the term "same patentable invention". The judicial construction of 37 CFR 1.601(n) is contrary to the plain reading of 37 CFR 1.601(n). The plain reading of 37 CFR 1.601(n) defines a one-way test. Accordingly, the judicial construction of 37 CFR 1.601(n) has redefined 37 CFR 1.601(n).
37 CFR 1.131(a)(1) precludes the antedating of a reference for claims defining the same patentable invention within the meaning of the 37 CFR 1.601(n). That is, when your pending claims define the same patentable invention within the meaning of 37 CFR 1.601(n), as claims in a patent, you cannot overcome a rejection based upon that patent by proving a date of invention for your claims that is prior to the 35 USC 102(e) date of the reference patent. However, Winter and Noelle provide a very narrow definition for "same patentable invention" in 37 CFR 1.601(n). Therefore, one immediate consequence of Winter and Noelle, is that the standards for when a reference can be antedated in ex parte prosecution have been re-defined - - and relaxed. For example, you can now antedate a reference patent claiming a species when your pending application claims a genus containing that species, so long as the species defined by the claim in the reference patent would not have been obvious in view of the genus in the pending application. Generally speaking, the broader the pending claim vis-a-vis the claim in the reference you are attempting to antedate, the more likely it is that the two-ways test will not be met, and therefore the more likely it is that you will be able to overcome the rejection by antedating the reference!
3. The Authority for Interferences, 35 USC 135(a), and Modern Interference Practice
35 USC 135(a) indicated that the Director may declare an interference if a claim in an application and a claim in another application or patent meet this test. That factors that go into whether the Director will declare an interference, and the timing of the interference are not well defined.
In 1999, the Board created an internal division called the Trial Section for the purpose of efficiently handling interferences. Since that time, almost all interferences have been handled by members of the Trial Section.
The Trial Section has made interference procedure relatively uniform. The Trial Section has provided substantial guidance to the interference bar by publishing a large number of decisions, and it has marked some of those decisions precedential to the Trial Section. The Trial Section has also cut down and essentially eliminated the backlog of pending interferences.
An interference will typically only be declared when a patent applicant requests an interference by complying with all of the requirements for such a request as specified in 37 CFR 1.604 or 607, and the applicants claims are otherwise allowable. Under current procedure, an APJ reviews all interference requests while the application is still at the Group. Once the APJ deems the examiner's interference memorandum papers and the files to be in order, the APJ instructs the files be transferred to the Board for final review and declaration of an interference.
An interference is initiated by mailing of a paper declaring the interference. This paper currently includes a 55 page form "Notice Declaring Interference" (copy of which is posted on the Board's web site) that spells out a large number of procedural requirements and limitations.
The typical interference, as defined by the rules of practice and the Notice Declaring Interference, includes two different phases. The first phase is a non-priority phase followed a priority phase. Each phase lasts roughly one year.
Conceptually, the non-priority phase is limited to the issues relating to what claimed subject matter is interfering. That is, the first phase deals with redefining the interfering subject matter as it was identified in the notice declaring the interference.
To interfere, claimed subject matter must be patentable, and therefore the non-priority phase includes challenges to patentability and presentation of additional claims. To interfere, subject matter must meet the two-ways test, so this phase relates to showings that subject matter defined by claims are or are not obvious in view of one another, and presentation of additional claims.
Unfortunately, interferences use counts to define what constitutes separate patentable inventions. 37 CFR 1.601(f). I say, unfortunately, because counts do not per se define rights sought by either party and therefore add a layer of complication unnecessary for the core issues of who is entitled to what patent rights. In any case, in addition to the first phase allowing opportunities to re-define the claimed interfering subject matter, the first phase also allows redefinition of the count or counts and which claims correspond to each count. Each count defines a set of limitations to which a party must prove priority (in the second phase of the interference) over the other party (or parties) in order to be awarded priority for that count.
I have simplified the procedural issues in the first phase by not specifying the procedures involved to redefine the interfering subject matter. These procedures include the sequence of filing preliminary motions, oppositions, and replies thereto, and responsive motions, oppositions, and replies thereto. In addition, cross-examination of declarants whose declarations are filed in support of motions, oppositions, and replies, challenges to admissibility of evidence, are all interleaved with the filing of and responding to motions, oppositions, and replies. See 37 CFR 1.601 et seq. Notice Declaring Interference for details, and 37 CFR 1.633-637.
In the second phase, the parties present their priority evidence and optionally cross-examine their opponent's priority evidence declarants to determine who is entitled to priority for each count. The party that loses on priority for a count has judgement entered against all of its claims corresponding to that count. That is, at the end of the day, at least one party loses its interfering claims. Since issues of priority, prior art, and support are all in play, both parties may lose their claims in an interference.
Most interferences do not reach a determination of priority in the priority phase. That is, judgement is usually entered either resulting from decisions on motions or in response to actions taken by the parties to resolve the underlying business conflict.
An important aspect of interferences is that there is a broad scope of res judicata. According to 37 CFR 1.658(c), an interference settles all issues that were in fact raised and that could have been raised. Cf. In re Deckler, 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992); and Ex parte Tytgat, 225 USPQ 907 (PTOBPAI 1985) (expanded panel). Since essentially any issue can be raised in an interference, 37 CFR 1.658(c) has teeth.
As to timing of an interference, it takes a median of 22 months from date of filing a request for an interference until an interference is actually declared. See the "Report of the January 2002 meeting of the Interference Committee of the AIPLA" in the AIPLA 2002 Quarterly Bulletin and posted at: http://www.neifeld.com/advart11.htm. Do not expect an interference promptly upon filing an interference request!
The first phase of the interference will last about one year. If the interference continues to the second phase, that will also last about a year. Thus, an interference from request to final decision will typically span three to four years.
Interferences are inter partes litigations. However, they have only a very limited discovery, no infringement issues, and no damages issues. For these reasons, interferences typically cost substantially less than otherwise comparable district court patent litigations.
4. 35 USC 135(b) - Statutory Bars
In order to prevent a bar to obtaining rights to a claim published in a PCT application, a U.S. application, or an issued U.S. patent, you generally must copy the claim within one year of its date of publication. 35 USC 135(b).
Copying claims tolls the 35 USC 135(b) statute. However, some members of the interference bar have suggested that unreasonable delay in pursuing an interference (for example by failing to file a 604 or 607 request) from the date of copying the claims may result in prosecution laches. There is as of this time no case law on this prosecution laches issue.
When you copy claims from another patent or application, you are obliged to notify the examiner of the that fact. Failure to do so is an ethical violation and a violation of 37 CFR 604(b), 1.607(c) and 10.23(c)(7), and will likely result in disciplinary action. Bovard v. Respondent, Office of Enrollment and Discipline ("OED") Proceeding D96-01 (Commissioner's Decision, August 27, 1997), OED discipline opinion D01 posted at: http://www.uspto.gov/web/offices/com/sol/foia/oed/disc/disc.htm.
While I have referred to copied claims, the 135(b) test refers to claims to "substantially the same subject matter." However, if you copy claims exactly, there can be no doubt that you presented claims that define substantially the same subject matter. See In re Berger, 61 USPQ2d 1523, ___ 279 F.3d 975, ___, 2002 U.S. App. LEXIS 1186. (Fed. Cir. 2002); Thompson v. Hamilton, 152 F.2d 994, 68 USPQ 161 (CCPA 1946); Corbett v. Chisholm, 56 F.2d 759, 196 USPQ 337 (CCPA 1977); and Ex parte Fine, 217 USPQ 76 (PTO BA 1981) for discussions of the meaning of "substantially the same subject matter."
5. 35 USC 135(c) - Settlement Agreement Filing Requirements
A judgement or the like terminates an interference. 37 CFR 1.685(a). The parties may however reach a business settlement and then request that the interference be terminated, for example, by one party requesting entry of adverse judgement. All agreements or understandings in contemplation of settlement of an interference must be (1) reduced to writing and (2) timely filed in the USPTO. 35 USC 135(c) and 37 CFR 1.666. Failure to timely file an agreement or understanding relating to settlement of an interference has severe consequences. Moreover, such an agreement between the parties does not terminate an interference. The settlement papers filed in the USPTO are periodically reviewed by an attorney from the Justice department for potential antitrust violations. What constitutes an agreement or understanding in contemplation of a settlement is the subject of some debate. See Johnston v. Beachy, paper No. 200, Interference No. 104,286 (PTOBPAI 2001) (Trial Section en banc opinion) posted at: http://www.uspto.gov/web/offices/dcom/bpai/its/104286-200.pdf.
6. Advice Regarding Interferences
You may think it useful to request an interference, or at least to copy claims, whenever the opportunity arises to do so. However, that may not necessarily be in your client's best interest. Keep in mind that pursuing an interference in a pending application is likely to substantially delay issuance of any patent on that application. Accordingly, copying claims is generally not an effective method of obtaining patent protection. Instead, it is a mechanism that results in cancellation of claims. Interference practice is generally employed primarily to obtain cancellation of claims of others.
If you request an interference, the application in which you request the interference will be tied up in the USPTO for years, and possibly in the courts after that. The application most likely will not issue while tied up in litigation, even though it survived the PTO interference proceeding. Martin v. Clevenger, 11 USPQ2d 1399, 1400 (Comm'r 1989). If you do not specifically request an interference and you do not copy claims, it is likely that the application will issue with claims defining subject matter similar to the potential target patent's claims or published application's claims, and your client will have saved a lot of money. Thus, you should carefully consider whether your client will be better off requesting an interference or even copying claims than otherwise.
In those instances where you client actually needs an interference, consider splitting the claimed subject matter into separate applications such that you may obtain a patent or at least advance prosecution on arguably non-interfering subject matter while pursuing an interference in an application containing the copied claims.
Keep in mind that copying claims (and notifying the USPTO when you do that as required by rules 604(b) and 607(c)) is not the same as requesting an interference. Requesting an interference requires compliance with all sections of rule 604 or 607. If you do not comply with all sections of rule 604 or 607, it is unlikely that the USPTO will act on its own to declare an interference. That prospect (lack of sua sponte action by the USPTO) allows the opportunity for you to copy claims to toll the 35 USC 135(b) bar, without immediately incurring additional interference related costs. Except for the possibility of prosecution laches, copying claims without filing a formal request is an insurance policy enabling clients to defer the hard choice of whether to proceed with requesting an interference until after sorting out related business and legal issues. This tactic is particularly useful against claims appearing in published PCT and U.S. applications. You can copy those claims in an application and then bide your time to see what claims actually issue into a patent from the target publication. If the claims that issue in a patent from the target are sufficiently narrowed, your client will no longer have a business need to pursue an interference.
Another action you can take when you identify that a reference patent or published application claims subject matter similar to that claimed in your application is to present in your application broader claims. The reason to do this is to preclude a finding of two-ways obviousness between the subject matter defined by the claims in your application and the claims in the reference. Assuming you can antedate the filing date of the reference, the examiner will not have a basis to maintain a rejection of you broad claims in view of 37 CFR 1.601(n) as interpreted in Winter and Noelle, supra. In fact, I have used this strategy to obtain allowance of applications which otherwise would have gone into interference.
To summarize, interferences are complicated. You should consider copying claims adverse to your client's business to toll the 35 USC 135(b) bar. You must in all cases notify the USPTO when you are copying claims. You may be able to bide your time after copying claims, but there is an issue with respect to prosecution laches. You may be able to broaden your claims to cover the claims in the target to avoid an interference with the target, and still have your broad claims allowed. You should consider interferences and file a formal interference request against a target patent or application when business interests would be substantially furthered by cancellation of the claims of the target. If you do need to cancel claims in a target, it may be useful for you to split off your claims to arguably non-interfering subject matter into continuation applications.
H. Public Use Proceedings, and Why and When to Use Them
Petitions for public use proceedings are extremely rare. There are on the order of four such petitions filed annually, according to a source in the Office of Patent Legal Administration at the USPTO. The reasons for this rarity are primarily due to the limitations imposed on public use proceedings, and the rarity of third party knowledge of actual prior public use events.
37 CFR 1.292 allows a member of the public to petition for institution of a public use proceeding in an application. MPEP 720 et seq. provides substantial guidance on the procedures employed in public use proceedings. Public use proceeding determine whether there is a public use or sale of the claimed invention that occurred more than one year prior to the filing date. That is, whether there is a statutory bar event. 37 CFR 292(a). However, 37 CFR 292(b)(3) generally temporally limits the right to petition for a public use proceeding to prior to both publication of the application and issuance of a notice of allowance in the application. There is an exception in the case of reissue applications, for which the petitioner has two months from date of the announcement of the reissue application in the Official Gazette. MPEP 720.01. 37 CFR 292(c) precludes a petition of a public use proceeding from parties involved in an interference, and the interference rules require allegation of any public use to be timely made via preliminary motion in the interference.
Evidence in support of a successful petition almost certainly requires affidavits or declarations, since statutory bar events are not evidenced by self-authenticating documents.
The PTO sends petitions for public use proceedings to the Office of Patent Legal Administration for formalities review. If the petition passes the formalities review, it is forwarded to the examiner for a decision on the merits. The merits of such a petition are whether its showings are sufficient "to make a prima facie showing that the invention claimed in an application believed to be on file had been in public use or on sale more than one year before the filing of the application." 37 CFR 1.292. If the examiner believes there is a prima facie showing, the Director may designate an official to conduct the proceeding. The public use proceeding is procedurally governed by the evidentiary rules and taking of testimony employed in interference (37 CFR 1.671 to 1.685.). The interference rules generally incorporate the Federal Rules of Evidence, provide for direct testimony via declaration, and cross-examination via deposition. Thus, a public use proceeding should proceed with the patent applicant entitled to cross-examine the declarants whose declarations were filed in support of the petition, present declarations from rebuttal witnesses, and petitioner should have the right to cross-examine the rebuttal witnesses. Thus, those people whose declarations supported the petition for a public use proceeding should be prepared to be cross-examined based upon the statements in their declarations.
The petitioner has a right to participate in any declared public use proceeding, but not subsequent prosecution of the application. For proceedings not involving a reissue application, the declaration of the proceeding does not entitle the petitioner to access to the file of the pending application, which is a distinct disadvantage.
There are relatively few instances when a third party will know the filing date of an application and also know of a relevant statutory bar event. The three most likely mechanisms to identify applications which might have statutory bars suitable for a public use petition are: discovery in litigation on related applications; monitoring of U.S. priority claims in published foreign and PCT applications to identify unpublished U.S. applications; and monitoring of reissue applications. It is useful to keep the existence of this type of proceeding in mind in connection with these activities.
I. Determinations, and Why and When to Use Them
Determinations are very rare. Acting Chief APJ Harkcom recently told me that there have been no determinations in the last few years.
42 USC 2182 determinations are title determinations based upon whether an invention "was made or conceived in the course of or under any contract, subcontract or arrangement entered into with or for the benefit of the" Department of Energy. Apparently, the most recently reported case involving a 42 USC 2182 determination is Richards v. Department of Energy, 49 USPQ2d 1930, 1998 Pat. App. LEXIS 8 (BdPatApp&Int 1998)(expanded panel; Smith and Lee dissenting), which held that "that the Board of Patent Appeals and Interferences does not have the authority to decide the question of patentability raised in a title determination under 42 U.S.C. § 2182" Richards at ___, 18. 42 USC 2182 determinations only can arise in the context of work relating to contracts with the Department of Energy.
42 USC 2457 also provides the Board jurisdiction over title determinations for employees and contractors of National Aeronautics and Space Administration (NASA). The issue for this determination is whether the Administrator of NASA, instead of the inventor or assignee, is entitled to receive a patent having "significant utility in the conduct of aeronautical and space activities".
In both 2182 and 2457 proceedings, the applicant is notified of the intended transfer of title and has 30 days from that point to request a hearing before the Board to contest transfer of title. In both cases, the Board is empowered and required by statute to apply the rules and procedures used in interference proceedings in the title determination proceedings.
J. Oppositions - The Wave of the Future?
There is considerably momentum for enactment of legislation providing the USPTO authority to conduct post grant "Oppositions." The decision in Winter and its affirmance by the CAFC, and a general dissatisfaction with the usefulness of reexaminations are the genesis of this momentum. Winter (and a string of related cases narrowing the scope of jurisdiction in interferences) substantially reduces the ability to challenge potentially invalid patents with non-self-authenticating evidence, such as prior invention. Prior to Winter, the test for the existence of an interference was unclear, but presumed by case law and construction of 37 CFR 1.601(n) to require only a one way test. Accordingly, interferences were, in the past, requested and granted upon a showing that the target patent's or application's claims were obvious in view of the requestor's application's claims. The Winter requirement narrows the scope of interferences foreclosing that option in many situations.
Oppositions are a reasonable solution to the limitations of reexaminations and interferences. This is because oppositions are intended to be a mechanism to challenge patent validity in the USPTO on all forms of evidence, specifically including non-self authenticating evidence. Non self authenticating evidence requires use of rules of evidence, which are generally unfamiliar to examiners. However, the members of the Board, and particularly the Trial Section, are versed in handling evidentiary issues and weighing testimony. The opposition system envisioned by the American Intellectual Property Lawyers Association (AIPLA) amongst other organizations is one in which the Board has jurisdiction, and non-self authenticating evidence is admissible.
The basic concepts being floated for an opposition system are in fact modeled after the existing procedures in place in interferences. These procedures include for example a prima facie showing of unpatentability, submission of motions, oppositions, and replies, and attacks on admissibility of evidence generally along the time frame now used for interferences. There may also be limitations imposed on requesting oppositions that promote early challenges to validity, such as a time limit from date of issuance of the patent, opposition filing fees that increase with age of the patent, and imposition of estoppel for late requested oppositions.
Oppositions are supposed to benefit the public by reducing the cost to cancel invalid patents harming competition, compared to patent infringement litigation. Oppositions will be much less expensive than patent infringement litigation, because oppositions will not have infringement and damages issues. Oppositions are also likely to have much more limited discovery than patent infringement litigation.
Oppositions will be overwhelmingly more popular than interferences because they will not have the drawbacks peculiar to interferences. For example, an opposition procedure will not have the procedural complexity of counts, will not negatively impact the requestor's own applications, and will not require claim copying.
Since oppositions will most likely be as important as any procedure now available in the USPTO, pay close attention to developments regarding oppositions.
IV. Key Concepts and Strategies
A. Application to the Course's Fact Pattern
Now lets review the fact pattern for this course in light of the foregoing consideration. What did the attorney fail to do that should have been done, and what did the attorney do that was incorrect?
Did Ms. Rush pay close attention to inventorship?
Should Ms. Rush have conceded on the requirement to restrict? If not, could she have added exact method and apparatus analog claims to preclude the requirement as to the CVD method and apparatus for silicon? If the examiner maintained the requirement and the attorney believed that the examiner's position was not in accord with controlling authority, what action should she have taken, and when?
When she received the restriction requirement, did she notify Acme of its options and consequences? When she received the notice of allowance, did she notify Acme of its options and consequences?
Assuming Acme decided to file division application on the food related inventions, what impact would a failure to name the second and third inventors in the original application have on the alleged division applications to the food related inventions? If the inventorship was incorrect in the original application, how could that be fixed after the first patent had issued?
Was new claim 16 advisable? If not, why not? Assume a second patent ultimately issues on an application referred to by Acme as a division of the first patent, and that the second patent claims the CVD apparatus for production of silicon films. What would be the impact of having application claim 16 (recall the claim mixing the computer program and apparatus limitations) issue in the first patent? Consider both double patenting and potential patent term adjustment issues. For example, assume the issuance of the second patent was delayed 15 years due to interference and appeal issues, and all of that term is adjusted such that, at issuance, the second patent has a 17 year term. Is it enforceable?
Was new claim 15 advisable?
Did Ms. Rush leave subject matter unclaimed? Did you note the breadth of the examiner's reasons for allowance? Were all of the independent claims commensurate in scope with the examiner's statement of reasons for allowance? If you had to draft a division application defining the apparatus, or a continuation application claiming the method of making , how would your new claims be broader than independent application claims 7 and 16?
There are many procedures available in the USPTO. It is important to be cognizant of them and generally know how and when to consider using them. In that respect, the laws and rules continue to change. You need to be aware of changes in the relevant statutory and case law and rules of practice.
It is also important to remain aware of your ethical responsibilities to the USPTO for factual accuracy, and also note the heightened level of scrutiny you representations may receive in some of the special procedures in the USPTO. Check your facts. If you review work of others, personally check any assertions of fact in their work.
Each type of procedure in the USPTO has its own quirks. If you are about to employ some procedure that is new to you, you should do your homework. Carefully review the rules and recent changes thereto, guidance in the MPEP, and check for relevant case law.
On ex parte matters, consider checking with USPTO personnel on any questions you have before acting on any ex parte matter. You will find most people in the USPTO more than willing to provide informal guidance. On inter partes matters, of course, ex parte communications are prohibited, and you should not ex parte request guidance in inter partes proceedings. Cf. A.S. v. B.R. 1998 Pat. App. LEXIS 10 (BPAI December 03, 1998).
This paper discusses several of the procedures available in the USPTO and suggests how and when to use them. However, the paper does not discuss all procedures available in the USPTO. For example, the it does not discuss reissue applications, ex parte and inter partes reexaminations, and certificates of correction. Keep these other tools in mind.
In addition, this paper does not discuss detailed consequences flowing from the Winter and its progeny. You can find a more detailed discussion of those consequences and impact on patent prosecution in Neifeld, " Winter, its Impact on Prosecution and Patent Strategy, and Comments on 35 USC 135(b)(2)" posted at: http://www.neifeld.com/zarfas_040406.htm.
In addition, this paper does not discuss the details of interference practice, per se. For more details on interference practice, I recommend "PTO appellate and interference practice in the New Millenium," available from the Intellectual Property Owners Association. See www.IPO.org. In addition, there are a few dozen Trial Section opinions in interferences posted on the Board's web site, along with interference rule makings, statistics, and forms. See the Board's web site at: http://www.uspto.gov/web/offices/dcom/bpai/index.html.
1. I retain copyright to this article, I grant AIPLA an unlimited license to copy, reproduce, sell, and compile. Please direct to AIPLA any requests for compilations including this paper, such as the AIPLA "How-To" manual for patent prosecution. This paper will be available on my firm's web site under the Advanced IP Articles page http://www.neifeld.com/advidx.html.
2. www.Neifeld.com. My technical background includes a doctorate in Physics from Rutgers University and four years of R & D work for the U.S. Army. I am also a founder of the PatentValuePredictor service (www.PatentValuePredictor.com) and an inventor of the macro economic model that service uses to provide automated patent valuations.
3. The AIPA was enacted November 29, 1999 as part of P.L. 106-113 and amended by Pub. L. 107-273 enacted November 2, 2002.