THOUGHTFUL STRATEGIES FOR AFTER-FINAL PRACTICE. Steven M. Greenberg Head of Practice

Transcription

1 THOUGHTFUL STRATEGIES FOR AFTER-FINAL PRACTICE Steven M. Greenberg Head of Practice

2 The Final Rejection in Context For the practitioner, the Final Rejection can be an alarming moment. It is the moment when the practitioner must communicate to the client that prosecution as a matter of right has reached the outer limit. For the client, the Final Rejection is the moment when decision-making must occur in respect to the fresh expenditure of costs. While the practitioner accepts the Final Rejection as an event in the ordinary course of business, even for the largest of clients, the Final Rejection is not a welcome event. For the Patent Office, the Final Rejection represents the natural conclusion of prosecution of a patent application wherein, after two rounds of negotiation it should be clear whether or not patentable subject matter exists within the patent application. 2

3 The Traditional Meaning of the Final Rejection M.P.E.P governs the Final Rejection. A Final Rejection generally is appropriate on or after a second action on the merits except where the examiner introduces a new ground of rejection that is neither necessitated by applicant s amendment of the claims, nor based on information submitted in an IDS. M.P.E.P (a) On Final Rejection, Applicant does not have a right to amend. M.P.E.P On Final Rejection, Applicant is not entitled to an interview with the Examiner. M.P.E.P On Final Rejection, Applicant may cancel all rejected claims, file an RCE or seek an appeal as a matter of right. M.P.E.P On Final Rejection, Applicant may submit a proposed amendment after-final, but entry of the amendment is at the discretion of the Examiner. M.P.E.P

4 The Reality of the Final Rejection Two rounds of negotiation is insufficient to determine the presence of patentable subject matter primarily due to the oftentimes poor condition of the originally presented specification and claims and the resulting poor quality of first non-final office actions. Rounds of Negotiation generally do not mean face-to-face discussions, but passive paper exchanges not really a negotiation. In some popular art units (read: data processing), too many Examiner s lack the authority to allow applications in the first round of prosecution and most either are encouraged not to grant allowances in the first round of prosecution, or elect not to do so. 4

5 The True Cost of the Final Rejection An RCE fee to the USPTO. 6 months additional delay to potential allowance. A disappointed customer. Potential appellate proceeding with imperfect claims. Uncertainty -- No further ability to converge on allowable claim language. 5

6 The Goal of an After-Final Strategy Reduce delay of RCE to 3 months. An improved record for appeal and possibly improved claim language. Certainty on convergence towards allowable claim language. Continued negotiation with Examiner. Instilling confidence in your customer by recommending a strategic path to advancement of prosecution at the least cost based upon the combination of attorney knowledge, skill and practicality exercising all tools at the disposal of the attorney. 6

7 The tools of the strategic prosecutor (AFCP 2.0) After Final Consideration Pilot (AFCP) 2.0 Prior to the advent of the AFCP two years ago, an interview had been a matter of right only on non-final rejection. No interview would have been granted on final excepting in rare circumstances. AFCP 2.0 is the ticket to more time negotiating with the Examiner. Even if an RCE is required it is not a wasted RCE. We know in advance if prosecution is advanced by a proposed amendment. Pre-arrange a pre-exam interview if an RCE is required. Examiners do not receive the full 2.0 count on second round of prosecution, but I never met an Examiner who wasn t willing to receive the 1.75 count in a second round of prosecution without having to write a rejection. 7

8 The tools of the strategic prosecutor (the appeal) The statistics appear to disfavor the PAC. 75% to 90% of PACs followed by Appeal Briefs in the computing art units result in an Examiner s Answer (e.g. the Examiner does not cave). But, without PAC, Examiners tend to present Examiner s Answers in only 45% to 70% of instances in the computing art units. The statistics favor the appellate route, though even with AFCP 2.0. More than 1/3 of applications on appeal result in the Examiner re-opening prosecution or allowing one or more claims. Those are good odds. Even if you do not request a PAC, you receive a PAC without knowledge. That means the applicant receives the attention of not one examiner, but four before heading to the PTAB where an additional three will review the case. That is seven examiners for $2,000. A good deal. The PTAB affirms less than half of all of the 2/3 of appeals that receive an Examiner s Answer. Thus, the applicant receives a positive result advancing prosecution in 2/3 of all applications brought to appeal while improving overall quality due to greater examiner attention in at least 2/3 of all appeals. 8

9 The tools of the strategic prosecutor (the PAC) Remember when I said the statistics disfavor PAC? It isn t necessarily true. PAC is only appropriate when Examiner has neglected to account for a critical claim element in a rejection or where there is a clear misinterpretation of the scope of the cited art. PAC is inappropriate for all other disputes requiring a factual finding by the PTAB. There are no studies (yet), but I am certain that for PACs appropriately sought, the percentage of Examiner s Answers would be dramatically smaller resulting in a much more cost effective outcome for the client. 9

10 The tools of the strategic prosecutor (Request for Rehearing) The PTAB loves the per curiam aff d approach to Decisions on Appeal. It is not permissible under the law. The Gechter standard requires the Board to provide a claim construction when at issue and to make a factual finding for any and all facts in dispute. The Decision on Appeal is our best guide to a satisfactory amendment with RCE after Decision on Appeal. If there are no factual findings, there is no guidance. Force guidance with a Rehearing. The PTAB has never actually denied a Rehearing in the history of Rehearings and the PTAB, being its defensive self, enjoys expounding upon exactly why the PTAB believes its decision making was correct in the Decision on Appeal. Voilà! Guidance. Rehearings are free extensions of time (XOTs). Rehearings allow more time and a better basis for you to advise your client as to how to proceed. 10

11 The tools of the strategic prosecutor (Post-Prosecution Pilot Program, e.g. P3[4]) 6 month pilot limited to 200 requests in each tech center. Must be filed by 2 nd month date and limited to 5 pages of argument as in PAC. Claim amendments judged on traditional AF standard. Affidavits permitted. PAC triggered with Applicant participation. Advantages: Direct access to SPE and primary examiner by Applicant and additional on-record explanation of rejections post-p3. Disadvantages: 5 page limitation and Rule 116 standard of amendment (which is almost always non-entry). Only scenario then for P3 then is when examiner lacks signatory authority or traversal is only negotiating position 11

12 The Most Important Tool of All (Examiner Data Mining) Every examiner behaves differently depending upon the knowledge of the examiner in how to game the count system and the workload experienced by the examiner and the capacity of the examiner to make unsupervised decisions. The Juristat tool is a critical tool that shows the past performance of each examiner in the face of certain prosecution events. It is no longer acceptable to assume all examiners are of equal mentality and to conduct prosecution decisioning based upon the Joe Blogs prototypical examiner. 12

13 This sample report shows that 70% of all RCEs resulted in a new Final Rejection and only 25% resulted in an allowance. Examiner Behavior Based Decisioning This sample report shows that only 3 of 21 appeals resulted in an affirmance. In 10 of those appeals, Examiner was reversed. In the other 8, Examiner withdrew the rejections. The conclusion: Examiner is unlikely to work with the Applicant on RCE, Interviews seldom are effective, but Examiner does not perform well on appeal.

14 The CRGO Protocol for After Final Practice Examiner Analysis First. What is likely to be the most effective approach with Examiner given Examiner s past behavior? How does Examiner act generically on final office action in response to an Interview? PAC? Appeal? Does Examiner demonstrate a willingess to allow applications? Does Examiner have the ability to allow applications without approval from a superior? Strength of the Case Second. Do I have a strong appellate position? Are there unaccounted for claim elements? Potential for Meaningful Claim Amendment. Do I have a plausible amendment that provides for a valuable claim on issuance? Is the finality of the final rejection appropriate? If not, consider a Rule 181 Petition (but there are pitfalls) Solution: PAC on missing element or where Examiner needs supervision. AFCP 2.0 to compel AF interview and gauge possibility for successful RCE. Appeal if Examiner becomes intransigent consistent with past behavior. RCE only with pre-examination interview prearranged. 14

15 The Results as Measured Over the period of 2010 to 2015 (5 year study), CRGO filed 542 new patent applications with an allowance rate of 82.8% and an average time to disposition of 25.3 months through 1.7 office actions. Over the period of 2013 to 2015 (2 year study), CRGO filed 214 new patent applications with an allowance rate of 95.2% and an average time to disposition of 14.5 months through 0.7 office actions. The difference is explained in connection with our liberal use of AFCP 2.0 and interviews and pre-appeals conference requests which were not en vogue prior to The use of the Juristat tool also clearly has promoted better decision making with regard to the historic behavior of our Examiners after final. 15

16 Questions? 16