Patent Law Practice Center

Making the Decision to Appeal vs. Another RCE

Knowing when to give up on a patent application is particularly important for any patent applicant, but when is enough really enough? When should a patent practitioners advise the client to either walk away or file an appeal? Financial resources are limited even for the largest corporations, and throwing good money after bad is not a strategy for success, or a recipe for keeping your clients happy.

When you do not want to give up on a patent application, filing a request for continued examination (RCE) pursuant to 37 CFR 1.114 can be an attractive option compared with the cost and delay associated with filing an appeal to the Patent Trial and Appeal Board (PTAB). The filing of the first RCE for a small entity costs $600, and the cost of filing a second or subsequent RCE for a small entity costs $850. Those amounts are doubled for large entities. But filing an RCE also gives the applicant two more bites at the apple in order to try and convince the patent examiner to allow at least some claims. That is, of course, provided that the same rejection cannot be made in the RCE. If the same rejection could be made in the RCE, then the first action could be made final. Assuming you make a proper submission, which  includes, but is not limited to, an information disclosure statement; an amendment to the written description, claims, or drawings; new arguments; or new evidence in support of patentability, you should get at least two additional office actions.

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Making Post Grant Extremely Expensive for Challengers

The America Invents Act (AIA) created three new ways to challenge the validity of claims in already-issued patents. The AIA was signed into law on September 16, 2011, but the new post grant proceedings did not become available until one year after the signing, on September 16, 2012. These three new post grant proceedings are post-grant review, inter partes review, and covered business method review (the latter a variety of post-grant review that is limited to business methods relating to the financial industry).

Inter partes review has been extraordinarily popular due to the fact that the rules are stacked in favor of the challenger. Indeed, recently, Scott McKeown (a partner at Oblon Spivak and co-chair of the Oblon post grant practice group) wrote on his blog that the Patent Trial and Appeals Board (PTAB) “offers unprecedented speed with none of the patentee safeguards of the district court.” The biggest safeguard that a patentee enjoys at the district court is a presumption of validity. The presumption of validity does not attach in a post grant administrative proceeding. That’s a significant benefit to the challenger.

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USPTO Seeks Comment on Post Grant Trial Proceedings

The America Invents Act (AIA) provided for a variety of new administrative trial proceedings, including: (1) Inter partes review; (2) post-grant review; (3) covered business method patents review; and (4) derivation proceedings. To bring these new proceedings into being, the USPTO issued a number of final rules and a trial practice guide in August and September of 2012.

During the rulemaking to implement the administrative trial provisions of the AIA, the USPTO held roundtable discussions in a number of cities across the country. The USPTO at that time committed to revisiting the rules and practice guide once the Board and public had operated under the rules and practice guide for some period and had gained experience with the new administrative trial proceedings. With nearly three years of experience with these new proceedings, the time has now come for the USPTO to revisit the rules.

The USPTO began the process of revisiting the AIA administrative trial proceeding rules and trial practice guide by engaging in a nationwide listening tour. The USPTO conducted a series of eight roundtables in April and May of 2014, in Alexandria, New York City, Chicago, Detroit, Silicon Valley, Seattle, Dallas, and Denver, to share information concerning the AIA administrative trial proceedings and obtain public feedback on these proceedings.

The USPTO is now ready to take the next steps and is seeking public comment on all aspects of the new administrative trial proceedings, including the administrative trial proceeding rules and trial practice guide. Written comments must be received on or before September 16, 2014, and should be sent via e-mail to TrialsRFC2014@ uspto.gov. Electronic comments submitted in plain text are preferred.

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Prior Art Admission Burns Patentee in Reexam at CAFC

Recently, the Federal Circuit issued a non-precedential per curiam decision in an appeal from an inter partes reexamination. Chief Judge Rader, Judge Newman and Judge Dyk were on the panel.

Victor Manuel Celorio Garrido appealed from a decision of the Patent Trial and Appeal Board relative to the inter partes reexamination of U.S. Patent No. 6,213,703. The Board affirmed the Patent and Trademark Office (“PTO”) examiner’s rejection of all but six claims as anticipated or obvious over the prior art. Garrido appealed to the Federal Circuit, arguing that the Board erred by relying on prior art references that were not published or publicly accessible prior to the filing date and by failing to address alleged misconduct by the requestor.  The Federal Circuit panel concluded that the Board did not err and that the claims of misconduct were unsupported.

The ’703 patent, which claims priority to a predecessor application filed on October 3, 1997, is directed to an “Electronic Bookstore Vending Machine” for printing and binding books on demand. The ’703 patent’s specification explains that the invention is a step-by-step method and a system for formatting, printing, and binding books, magazines, or other printed material.

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CAFC Vacates PTAB Because of New Ground of Rejection

The Federal Circuit recently issued a decision on an appeal from the Patent Trial and Appeal Board where the central question was whether the Board and the examiner properly relied on the same articulated reasoning and factual underpinnings in rejecting a claim, or whether instead the Board made new findings and adopted different reasons to support a new ground of rejection, thus depriving the applicant of both notice and an opportunity to respond. See In re Lutz Biedermann.

Lutz Biedermann and Jurgen Harms (collectively “Biedermann”) appealed a decision of the Board affirming the rejection of claims 32, 33, 35–37, 39, and 48 of U.S. Patent Application No. 10/306,057 (“’057 Application”) for obviousness, 35 U.S.C. § 103(a). Ultimately, the Federal Circuit, per Judge Linn (with Judges Moore and O’Malley agreeing), determined that the Board rejection did constitute a new grounds of rejection. Thus, the Board’s decision was vacated and remanded for further proceedings.

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