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After-Final Practice: Navigating Expanding
PTO Options to Compact Patent Prosecution Utilizing Post-Prosecution Pilot Program (P3), After-Final
Consideration Pilot 2.0, Pre-Appeal Conference and More
Today’s faculty features:
1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific
TUESDAY, NOVEMBER 22, 2016
Andrew T. (Andy) Harry, Partner, Oblon McClelland Maier & Neustadt, Alexandria, Va.
Scott A. McKeown, Partner, Oblon McClelland Maier & Neustadt, Alexandria, Va.
Presenting a 120-Minute Encore Presentation of the Webinar with Live, Interactive Q&A
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Navigating Expanding PTO After-
Final Options to Compact
Prosecution
Scott McKeown
Andy Harry
Compact Prosecution??
Exam Delay + Pros. Delay – Average pendency in some art units 3-4 years
Unrealistic claim sets
– Numerosity
– Wasted first actions
– Bulk of examination time expended (40 hrs)
– Appeal?
RCE Churn Bonanza? 6
Inside Baseball
Before making your pitch, know the count! – Majority of weight placed on First OA
• Examiners encouraged to promote compact prosecution • Start with good (and not overbroad) claims
– Examiners receive 2.0 counts for “balance disposal” (BD) • 1.25 for First OA • 0.25 for Final OA • 0.5 counts for a “disposal”
– Abandonment, NoA, Examiner’s Answer, RCE filing (express abandonment)
– Reduced to 1.75 counts after RCE filing • 1.0 for First OA after first RCE • 0.75 for First OA after each subsequent RCE
7
Inside Baseball
Incentive to close the deal early – Reach out to the examiner to strike a deal after
receiving First OA (bulk of time and credit for 1st OA) • Examiner receives credit for issuing Final OA (0.25) and disposal
(0.5) without actually writing Final OA
Examiner Answer or Amendment – Examiner receives same credit (0.5) for both Examiner’s
Amendment and Preparing Answer • Additional time is allocated for conducting interview
– What would you rather?
8
Appeal?
9
Appeal Costs
Fee Impact
Notice $800/400/200
Forwarded to Board $2000/1000/500
Oral hearing $1300/650/325
Avoid appeals
RCE $1200/600/300 2nd $1700/850/425
No fee options first?
10
Final OA – Now What?
Has an interview been conducted? – If so
• Was the Examiner reasonable? • Consider a follow-up interview
– If not • Reach out to the Examiner to strike a deal
– Request presence of decision-maker
Are issues ripe for appeal? – Examiner is not willing to budge – Newly cited art in FOA?
• Consider whether new art is duplicative or whether further amendments are necessary
11
Final OA – Now What?
Nature of dispute – Technical issue?
• Misunderstanding of – Claimed invention
– Applied references
• Examiner just does not get it
– Legal issue? • 112, 102, 103, 101, etc.
– Is the law in flux (i.e. Alice-based 101)?
– Straightforward issue requiring a second pair of eyes?
12
Claim Scope Issues
Flexibility?
– Additional claim amendments available? • Can clarify/narrow while still achieving objective
• Further amendments would help overcome outstanding rejection
– No further wiggle room
• Objective would be undermined with further amendments
13
Business Considerations
Value –Invaluable assertion asset –Defensive portfolio patent
Cost –Tight constraints?
Speed –Is time of the essence?
How do we balance these factors?
14
The Examiner
Interview? –Positive previous result?
• Reach out and conduct a follow-on discussion to strike a deal
• Frankly discuss best path for entry of proposed amendment
–Negative previous result • Request SPE or Primary be present
• Move forward without any further
15
Decision to Amend
Options for Entry
– AFCP 2.0
– P3
– RCE
– 1.116
16
After-Final Options
17
Pre-Appeal Brief Conference Request –Initiates conference review –Limited to 5 pages of arguments –No interaction with panel –No amendments
After Final Consideration Pilot (AFCP) –Claims must be narrowed and not broadened in any way –Examiners are encouraged to reach out, but do they? –Effectiveness?
Amendment under 37 CFR 1.116 –May be needed in the event an agreement was reached but claims are narrowed in some aspect
Request for Continued Examination (RCE)
Appeal
AFCP 2.0
What is it? – Response under 1.116
• Requires an amendment to at least one independent claim that “does not broaden the scope of the independent claim in any aspect”
– Authorizes additional time for Examiner to consider amendments
– Examiners are encouraged to reach out to Applicant if submission does not lead to NoA • Additional time is also provided to Examiners to conduct
interview
18
AFCP 2.0
When to use AFCP 2.0 –Agreement was reached with examiner
• Amendments must be narrowing • Nature of amendments are within provisions of 1.116
practice – E.g. only require “limited searching and/or consideration by
the examiner”
–Minor amendments narrowing amendments • Even when a deal was not made with the Examiner
Likely fastest and cheapest option –Considering a successful result
19
AFCP 2.0
When not to use AFCP 2.0
– Amendments broaden claim scope in “any aspect”
• Consider negative estoppel created by the certification:
20
AFCP 2.0
When not to use AFCP 2.0
– Amendments go beyond scope of 1.116
• Amendments would require further search and consideration – Unless previously negotiated with the Examiner
• Consider RCE to secure entry of amendment – Avoids time extensions that may be caused by AFCP
2.0 or 1.116 response
21
P3
What is it?
– Pre-Appeal with increased Examiner interaction
– Panel presentation
– Enhanced feedback
22
P3
Developed as part of the Enhanced Patent Quality Initiative (EPQI) – http://www.uspto.gov/patent/initiatives/post-prosecution-pilot
Goals: –Enhance collaboration between applicants and examiners –Reduce RCEs and PTAB appeals
Leverages features of existing programs –Panel conference (Pre-Appeal) –5 page limit on arguments (Pre-Appeal)
•Can be single spaced and incorporate other arguments by reference
–Proposed narrowing amendments (AFCP) •Not included in page count •Analysis as to whether amendments are “narrowing” is guided by MPEP 1412.03 (Reissue)
What’s new –P3 Conference
•20 minute presentation to the panel (similar to PTAB oral hearing)
–Notice of Decision provides greater detail –No need to pay for notice of appeal (as opposed to Pre-Appeal)
23
P3 Details
What’s needed? – Request form
• Filed within two months of the mailing date of the final OA – (http://www.uspto.gov/sites/default/files/documents/sb0444.pdf)
– A statement (included in the statement) of willingness to participate in the P3 conference
– Remarks/Arguments • 5 pages (single spaced – exclusive of any amendments – may incorporate arguments by
reference)
– Optional proposed non-broadening amendments
Cannot have previously filed (or subsequently file) a AFCP or Pre-Appeal Request
A non-compliant request is treated as a response under 1.116
24
P3 Process
Conference Scheduling –The Office will contact the applicant to schedule the conference –Should result in a conference within 10 days of initial contact
Applicant presentation –Arguments can be directed to outstanding rejections or proposed claims –All material will be made of record –Level of interaction with the Panel not determined
25
Notice of Decision
PTO-2324
– (A) final rejection upheld
• If proposed amendment(s) were included with the P3 Request, the status of such amendment(s) will be communicated
– (B) Allowable application
– (C) Reopen prosecution
26
PTO-2324
27
Hopefully this field will be used to provide more concrete feedback.
P3 Details
Duration
– Started July 11, 2016
– Ends in 6 months or when 1,600 request have been received
• No TC will accept over 200 requests
28
Timing Inconsistency?
From the Federal Register Notice – “It is critical for P3 participants to understand that the filing of a P3 request will
not toll the six-month statutory period for reply to the final rejection. To avoid abandonment, further action, such as the filing of a notice of appeal or RCE will need to be taken within…
From the PTO – The P3 process will be terminated if applicant files any of the following after the
filing of the P3 Request but prior to a notice of a decision from the panel •A notice of appeal •A Request for Continued Examination (RCE) …
So what do we file if we don’t get a decision by the six-month date to keep the application pending? – Unlikely given the requirement to file by the two-month date – Reach out early and often to avoid this situation
29
P3 Strategies
When to use P3
–Instead of Pre-Appeal
• P3 has the added benefit of facetime with the panel
• No requirement to file Notice of Appeal offsets added expense
• Pre-Appeal rendered obsolete?
30
P3 Strategies
When to use P3
–Difficult examiner
• Second pair of eyes would be beneficial
–When the case seems “close” and clarifying amendments are authorized
–Prior to appeal on 112, 102 or 103 issues
–When not to use?
31
P3 Strategies
When not to use P3
– Close case
• The panel may defer to the PTAB
• No flexibility to present narrowing claims
– When 5 pages is insufficient
• Unlikely given the single spacing and incorporation of arguments by reference
32
P3 Strategies
When not to use P3
– Challenging 101 rejection
• May need to buy some time to let case law develop
– When broadening amendments are desired
• Consider RCE for entry or amendment under 1.116 depending on scope
33
RCE?
When to use
– Not ripe for appeal
• New issued spotted in FOA
– Further amendments either:
• (1) broaden claim scope; or
• (2) would not be entered under 1.116
– No deal negotiated with Examiner
34
RCE
Issues – Examiner count system
• If a deal was reached to substantively narrowing amendments may fast-track case to allowance
– Delay • Filing an RCE may place the application at the back
of the Examiner’s docket
Better alternative for important case? – Filing a Track One CON
35
Amendment Under 1.116
When to use as an alternative to AFCP 2.0 – When a deal was reached that includes
broadening the claims in some aspect
– When minor amendments would place the case in condition for allowance • Examiners are not given extra time to consider
amendments that: – cancel claims or that are made to comply with a formal
issue; or
– rewrite objected to claims in independent form
36
No Amendment
Options
– P3
– Pre-Appeal
• Obsolete?
– Appeal
37
Pre-Appeal
Effectively replaced by P3?
– Additional cost of filing Notice of Appeal
– No participation in conference
– No flexibility to present amendments
– No substantive feedback from panel
– Deck stacked against Applicant?
38
Pre-Appeal
When to use? – Simple issue that requires SPE intervention
• Could this have been addressed by involving the SPE sooner?
Missed two-month date for filing P3 – Pre-appeal can be filed after the two-month
date as long as it is accompanied by a Notice of Appeal
39
Appeal
When to use – Previous options were unsuccessful – Difficult case with no claim flexibility – 101 rejection that might benefit from additional
case law developments – Complex issue that could not be addressed in 5
page limit of P3 (or Pre-Appeal) – Time is not of the essence – When no further collaboration with the Examiner
would be beneficial
40
Appeal
Speed – Significant delay for Ex Parte Appeals at the
PTAB….but not for long?
41
https://www.uspto.gov/dashboards/patenttrialandappealboard/main.dashxml
Appeal
Efficacy?
42
June 15, 2016 presentation by Scott Boalick at the AIPLA/USPTO Patent Trial and Appeal Board Bench and Bar Conference
Appeal
Results
– Outcome can be panel-dependent
– Can reduce prosecution history
– Reversal leads to allowance
– But most expensive option
• Notice of Appeal Fee, Forwarding Fee, Request for Oral Hearing, preparation of Appeal Brief and Reply Brief
43
Conclusions
Collaborate with the Examiner! – Know who you are dealing with – Try to strike a deal
Weigh the options – Can we further amend?
•Narrowing – Examiner’s Amendment, P3, AFCP 2.0, 1.116
•Broadening – RCE, 1.116
•No – P3, Appeal (or Pre-Appeal if after 2 month date)
44
Conclusions
Weigh the options – Speed
• Time is of the essence (requires flexibility) – Examiner’s Amendment
• Relatively fast – 1.116, P3, AFCP 2.0
• May encounter delays – RCE, Appeal
– Cost • Cheapest
– Examiner’s Amendment
• Cheaper – 1.116, P3, AFCP 2.0
• Most expensive – Appeal – Cleaner record
45
P3 Update
Scott McKeown
Andy Harry
Results
47
36% Allowed
13% Reopened
50% Maintained
Time to First Contact
48
Average of 21.9 days
P3 Almost Complete
P3 is winding down to its final days
– Program formally ends January 11, 2017
– Some TCs are no longer accepting requests
49
What’s Next?
P3 2.0?
Improvements based on feedback on P3?
– Flexibility on the 10 day scheduling requirement
• This already appears to informally exist
– Clarity on how to handle new prior art
• Some Applicants have been confronted with new prior art during the conference
50
Feedback
Panel creation
– PTO training materials refer to selection of “mutually agreeable panel members”
• Does this give the Examiner veto power over SPE?
– One proposed solution is to require the presence of a Quality Assurance Specialist (QAS)
• Could be drain on PTO resources
51
Feedback
The conference – Make the conference interactive
• Allows for the exchange of ideas to efficiently close prosecution • Some conferences currently operate this way
The request – Implement auxiliary requests similar to EP oral proceeding
• This comes with the caveat that the Examiner must articulate why they choose a particular option
– Expand page limit?
Provide more “other time” for Examiners – More time to prepare – More time to consider auxiliary request if the concept is adopted – May result in higher fees for the P3 request
52
Appeal
Track One for appeals?
– There seems to be a movement afoot to implement a fast-track appeal path
– Cost?
• Track One examination is $4k
– Feasibility?
• Pressure on an already busy PTAB
53
