Appeal Practice Before Board Appeal Practice Before Board of Patent Appeals and of Patent Appeals and

InterferencesInterferences

Brian E. HanlonBrian E. HanlonDeputy Director, Office of Patent Legal AdministrationDeputy Director, Office of Patent Legal Administration

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BPAI Jurisdiction• What do they do?

BPAI Structure and Processes• How do they do it?

Board of Patent Appeals and Board of Patent Appeals and Interferences (BPAI)Interferences (BPAI)

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Jurisdiction (35 U.S.C. 6(b)):

• Review adverse decisions of examiners (ex parte and inter parte appeals)

• Determine priority and patentability of inventions in interferences (interferences)

Board of Patent Appeals and Board of Patent Appeals and InterferencesInterferences

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Governed by:

Title 35 of the United States Code (35 U.S.C. 6, 134, 135, 306, 315)

Title 37 of the Code of Federal Regulations (37 CFR, Part 41)

Board of Patent Appeals and Board of Patent Appeals and InterferencesInterferences

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Members of the Board(35 USC 6(a))

Director

Deputy Director

Commissioner for Patents

Commissioner for Trademarks

Administrative Patent Judges

Board of Patent Appeals and Board of Patent Appeals and InterferencesInterferences

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The Administrative Patent The Administrative Patent Judges (APJs) Judges (APJs)

• Each is a lawyerEach is a lawyer

• Each has a bachelor of science Each has a bachelor of science degree in chemistry, biology, degree in chemistry, biology, physics, or some form of engineeringphysics, or some form of engineering

• Some possess advanced technical Some possess advanced technical degreesdegrees

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APJs and Patent APJs and Patent AttorneysAttorneys

• Chief APJChief APJ• Vice-Chief APJVice-Chief APJ• ~ 71 other APJs~ 71 other APJs• ~ 21 Patent Attorneys – assist ~ 21 Patent Attorneys – assist

APJs in drafting opinionsAPJs in drafting opinions

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BPAI DIVISIONS and BPAI DIVISIONS and TEAMSTEAMS

• Appeals DivisionAppeals Division• BiotechnologyBiotechnology• ChemicalChemical• ElectricalElectrical• Mechanical and Business MethodsMechanical and Business Methods

• Trial DivisionTrial Division• Contested CasesContested Cases• InterferencesInterferences

•

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AppealsAppeals

• BPAI reviews the adverse decisions of BPAI reviews the adverse decisions of patent examiners in:patent examiners in:• Regular utility, plant, and design applicationsRegular utility, plant, and design applications• Reissue applicationsReissue applications• Ex parte and inter partes reexamination Ex parte and inter partes reexamination

proceedingsproceedings

• Issues on appeal are developed by Issues on appeal are developed by applicant and examiner before the case applicant and examiner before the case reaches the BPAIreaches the BPAI

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Patent Appeal ProcessPatent Appeal Process• Notice of Appeal (by Appellant)Notice of Appeal (by Appellant)• Optional Pre-Appeal Brief Conference Optional Pre-Appeal Brief Conference

Request (by Appellant)Request (by Appellant)• Appeal Brief (by Appellant)Appeal Brief (by Appellant)• Examiner’s Answer (by Examiner)Examiner’s Answer (by Examiner)• Reply Brief (by Appellant, optional)Reply Brief (by Appellant, optional)• Oral Hearing (by Appellant, optional)Oral Hearing (by Appellant, optional)• Examiner’s Response to Reply Brief (by Examiner’s Response to Reply Brief (by

Examiner)Examiner)• Decision (by BPAI)Decision (by BPAI)

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Request For Pre-Appeal Request For Pre-Appeal Brief ConferenceBrief Conference

Request must be filed with Notice of Request must be filed with Notice of Appeal.Appeal.

Request filed before or after the notice of Request filed before or after the notice of appeal will be dismissed as untimely.appeal will be dismissed as untimely.

Limited to 5 pages of arguments and Limited to 5 pages of arguments and cover sheet.cover sheet.

Should be focused on clear examiner Should be focused on clear examiner error(s).error(s).

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Total Minimum Time to Docketing: 14 months

Total Maximum Time to Docketing: 20 months

Patent Appeal Timeline

Reply Brief Filed

Examiner's Answer Mailed

Appeal Brief

Entered

Notice of Appeal Filed

Reply to Supplemental

Examiner's Answer

Reply Brief Noted OR

Supplemental Examiner's Answer

Mailed

2-7 months 3.5 months 2 months 3.5 months

Docketing Notice Mailed

BPAI Decision

2 months 1-2 months BPAI Pendency

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PATENT APPEALS AT PATENT APPEALS AT BPAIBPAI

• Patent Appeals can be decided On Brief or Patent Appeals can be decided On Brief or after an Oral Hearingafter an Oral Hearing

• In Fiscal Year 2007, BPAI docketed 4,639 new appealsIn Fiscal Year 2007, BPAI docketed 4,639 new appeals• 3,954 were On Brief3,954 were On Brief• 685 requested an Oral Hearing (Heard)685 requested an Oral Hearing (Heard)

• An An On BriefOn Brief Patent Appeal is one where the Appellant wants the Patent Appeal is one where the Appellant wants the decision based on the written record.decision based on the written record.

• A A HeardHeard Patent Appeal is one where the Appellant requests to Patent Appeal is one where the Appellant requests to present an oral argument before the panel to make his/her case.present an oral argument before the panel to make his/her case.

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An Oral Hearing may be in the form of a personal An Oral Hearing may be in the form of a personal appearance, telephonic presentation, or a video appearance, telephonic presentation, or a video conference via the electronic hearing room. conference via the electronic hearing room.

Oral HearingOral Hearing

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ORAL HEARING PRESENTATIONORAL HEARING PRESENTATION- PERSONAL APPEARANCE- PERSONAL APPEARANCE

For personal appearances:For personal appearances:• Arrive half hour prior the scheduled Oral Arrive half hour prior the scheduled Oral

Hearing.Hearing.• A security check is required before permitted to A security check is required before permitted to

the BPAI Hearing Room Area. the BPAI Hearing Room Area.

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ORAL HEARING ORAL HEARING PRESENTATIONPRESENTATION

•Upon arrival to the BPAI Hearing Room Waiting Area, parties Upon arrival to the BPAI Hearing Room Waiting Area, parties report to the Hearing Usher to verify their attendance. report to the Hearing Usher to verify their attendance.

•Hearing sessions normally comprise six sequential oral Hearing sessions normally comprise six sequential oral hearings. hearings.

•The Hearing Usher informs the respective parties when it is The Hearing Usher informs the respective parties when it is time to enter the hearing room.time to enter the hearing room.

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ORAL HEARING ORAL HEARING PRESENTATION - TELEPHONICPRESENTATION - TELEPHONIC

For Telephonic Hearings, the Appellant is told which telephone For Telephonic Hearings, the Appellant is told which telephone number to dial, and when to make the call.number to dial, and when to make the call.

The cost of the call is the burden of the Applicant.The cost of the call is the burden of the Applicant.

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ORAL HEARING ORAL HEARING PRESENTATION– VIA VIDEO PRESENTATION– VIA VIDEO

CONFERENCECONFERENCE• The arrangements to set up the video conference and the cost The arrangements to set up the video conference and the cost

involved for the call are the responsibility of the party.involved for the call are the responsibility of the party.

• The party appears on a screen in the electronic hearing room The party appears on a screen in the electronic hearing room and cameras in the hearing room send video of the panel to and cameras in the hearing room send video of the panel to the party’s location.the party’s location.

• In the event that the video connection is not successful, the In the event that the video connection is not successful, the Oral Hearing is then conducted telephonically.Oral Hearing is then conducted telephonically.

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ORAL HEARING PRESENTATIONORAL HEARING PRESENTATION

There is a time period of 20 minutes given There is a time period of 20 minutes given to make a presentation.to make a presentation.

Hearing presentations typically are:Hearing presentations typically are:• A general background of the invention A general background of the invention • Rebuttal to the particular arguments in the Rebuttal to the particular arguments in the

Examiner’s AnswerExaminer’s Answer• Answers to questions from the panelAnswers to questions from the panel

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ORAL HEARING ORAL HEARING PRESENTATIONPRESENTATION

If the Examiner makes a If the Examiner makes a personal appearance at the personal appearance at the Oral Hearing, the Examiner Oral Hearing, the Examiner may speak for up to 15 may speak for up to 15 minutes after the minutes after the presentation by appellant’s presentation by appellant’s representative.representative.

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How Do We Make How Do We Make Decisions?Decisions?

A patent appeal received at the A patent appeal received at the Board is assigned to a Board is assigned to a panel of 3 panel of 3 judgesjudges, with one judge designated as , with one judge designated as the the lead judgelead judge..

Lead judge reviews appeal and Lead judge reviews appeal and becomes familiar with technological becomes familiar with technological and legal issues, any prior art and legal issues, any prior art applied, and any evidence presented.applied, and any evidence presented.

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How Do We Make How Do We Make Decisions? (cont.)Decisions? (cont.)

Lead judge presents an explanation Lead judge presents an explanation of the issues and applied prior art of the issues and applied prior art (evidence) to the other two members (evidence) to the other two members assigned to the panel.assigned to the panel.

Oral Hearing is conducted (if Oral Hearing is conducted (if previously requested by Appellant).previously requested by Appellant).

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How Do We Make How Do We Make Decisions? (cont.)Decisions? (cont.)

Panel reaches conclusions as to the Panel reaches conclusions as to the issues in light of the evidence presented issues in light of the evidence presented and decide the case.and decide the case.

Lead judge proceeds to write an opinion Lead judge proceeds to write an opinion consistent with the panel’s consistent with the panel’s determination on the legal issues.determination on the legal issues.

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Factors Considered in Making Factors Considered in Making DecisionsDecisions

• Scientific understanding of the invention Scientific understanding of the invention involved.involved.

• Knowledge of the patent laws, rules, and Knowledge of the patent laws, rules, and current case law.current case law.

• Legal reasoning in view of the laws, rules, Legal reasoning in view of the laws, rules, and case law.and case law.

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Patent Appeals - Patent Appeals - DecisionsDecisions

• In patent appeals, the Board In patent appeals, the Board affirms affirms or reversesor reverses the examiner's rejections the examiner's rejections of claims.of claims.

• If there is more than one rejection in If there is more than one rejection in an appeal and at least one rejection is an appeal and at least one rejection is affirmed, the decision is affirmed, the decision is affirmed-in-affirmed-in-partpart..

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The DecisionThe Decision

• Publication of Board DecisionsPublication of Board Decisions• PrecedentialPrecedential

• Binding on Board, OfficeBinding on Board, Office• Procedure for becoming precedential Procedure for becoming precedential

set forth in SOP 2set forth in SOP 2• InformativeInformative

• Best practicesBest practices• RoutineRoutine• All Published on Board WebsiteAll Published on Board Website

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Patent Examiners

Board of Patent Appeals and Interferences

Court of Appealsfor the Federal Circuit

U.S. District Court for the District of Columbia

U.S. Supreme Court

The Appeal ProcessThe Appeal Process

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INTERFERENCEINTERFERENCE

BPAI determines the priority of invention between two or more

parties

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What Is An Interference?What Is An Interference?

• The United States has a patent The United States has a patent system under which a patent is system under which a patent is awarded to the one who is awarded to the one who is “first-to-“first-to-invent”invent” rather than the one who is rather than the one who is “first-to-file”“first-to-file” a patent application. a patent application.

• A proceeding conducted within the A proceeding conducted within the USPTO to decide who is “first-to-USPTO to decide who is “first-to-invent” is called an invent” is called an interferenceinterference..

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What Is An Interference? What Is An Interference? (cont.)(cont.)

• Interferences are declared Interferences are declared between between • two or more applications for patent, ortwo or more applications for patent, or• a patent and an application for patent;a patent and an application for patent;• NOT between two patents. NOT between two patents.

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The QuestionThe Question

When 2 parties claim the same or When 2 parties claim the same or substantially the same invention, substantially the same invention, who was the first to invent it?who was the first to invent it?

This is a question of This is a question of PriorityPriority..

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The ProcessThe Process• Begins with a Request by an applicant or Begins with a Request by an applicant or

examiner in the Technology Center (TC)examiner in the Technology Center (TC)• Consultation between an Interference Consultation between an Interference

Practice Specialist (IPS) in the TC and an Practice Specialist (IPS) in the TC and an Interference APJInterference APJ

• Declaration of InterferenceDeclaration of Interference• Motions PhaseMotions Phase• Priority PhasePriority Phase• Oral Arguments (may be presented in either Oral Arguments (may be presented in either

phase)phase)• Decisions on Motions and/or PriorityDecisions on Motions and/or Priority• Judgment Judgment

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Declaration of Declaration of InterferenceInterference

• Officially begins the interference Officially begins the interference proceeding.proceeding.

• Sent by the APJ handling the interference Sent by the APJ handling the interference to all involved parties.to all involved parties.

• Defines the initial scope of the interference.Defines the initial scope of the interference.• Sets out a projected timeframe and Sets out a projected timeframe and

instructions for the proceeding.instructions for the proceeding.

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Motions PhaseMotions Phase• Purpose is to:Purpose is to:

• Resolve questions about the scope of the invention at Resolve questions about the scope of the invention at issue;issue;

• Handle patentability questions; and Handle patentability questions; and • Determine if the interference should continue on to Determine if the interference should continue on to

priority.priority.

• Each party can file motions, oppositions to the Each party can file motions, oppositions to the other party’s motions, and corresponding replies.other party’s motions, and corresponding replies.

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Priority PhasePriority Phase

• Evidence in the form of a written Evidence in the form of a written record comprising affidavits and record comprising affidavits and declarations is established.declarations is established.

• A record is filed with the Board.A record is filed with the Board.• Arguments citing the evidence of Arguments citing the evidence of

record are made.record are made.• Junior Party must prove its case.Junior Party must prove its case.

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Interference DecisionsInterference Decisions• Interferences are handled by the Interferences are handled by the

Interference Section of the Trial Division.Interference Section of the Trial Division.• There are 8 APJs on the Interference There are 8 APJs on the Interference

Section.Section.• A panel of three of those APJs is assigned to A panel of three of those APJs is assigned to

each interference.each interference.• A lead APJ is assigned to handle A lead APJ is assigned to handle

interlocutory matters and draft the final interlocutory matters and draft the final decision (judgment).decision (judgment).

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Interference Decisions Interference Decisions (cont.)(cont.)

The panel:The panel:• Reviews the record (evidence and Reviews the record (evidence and

arguments) submitted by each party.arguments) submitted by each party.• Determines whether the Junior Party Determines whether the Junior Party

has proven an earlier date of has proven an earlier date of invention.invention.

• Decides any issues deferred from the Decides any issues deferred from the motions phase.motions phase.

• Renders judgment.Renders judgment.

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BPAI WebsiteBPAI Website• Provides a wealth of information Provides a wealth of information • to the public on:to the public on:

• Procedures Procedures • RulesRules• DecisionsDecisions• StatisticsStatistics• Contact InformationContact Information

http://www.uspto.gov/web/offices/dcom/bpai/http://www.uspto.gov/web/offices/dcom/bpai/index.htmlindex.html

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QUESTIONS?QUESTIONS?