In part one of “Appealing Alternatives to Traditional Patent Prosecution,” we delved into a discussion of the importance of a company’s chosen method for protecting the results of its investment in research and development. Acknowledging that the delay of even one year in the issuance of a patent can mean significant loss of revenue for a company, we outlined the opportunity for a new strategy in patent protection and considered the business decisions that determine whether or not filing an appeal early in prosecution makes sense in a given case. In the second half of this article, we analyze the real-world benefits of effectively using appeals rather than the traditional approach.

Practical Application

In patent prosecution, less is sometimes more. There are diminishing returns when replying to office action after office action, especially when an examiner refuses to reconsider your position. Each unsuccessful response, including any and all Requests for Continued Examination (RCE), incurs costs that do not move the application toward patentability. Even worse, such serial responses create a voluminous record that may weaken the resulting patent.

In traditional practice, an applicant’s first response to an office action would explain the invention to the examiner. Assuming that the examiner maintains a rejection, as is commonly the case, the applicant must choose between repeating an unsuccessful argument or making additional arguments not considered persuasive enough to be included in the first response. Neither of these options is particularly attractive. If the examiner again maintains the rejection, the applicant is faced with filing an RCE. Considering this inefficiency and the U.S. Patent and Trademark Office’s newfound distaste for RCEs, an alternative approach becomes increasingly attractive.

The approach we advocate avoids filing an RCE and instead moves directly to appeal. An appeal gets to the core issues in a case, requires the examiner to clearly justify his/her bases of rejection, and allows an applicant to help control the content of the prosecution history. In order to move to appeal quickly, applicants must be proactive in shaping the case. This requires developing a long-term plan for prosecution, starting with a clear articulation of the invention in the response to the first office action, and clear responses to the rejections. It is also important to have strong, articulated arguments before deciding on this course of action. In such a case, responding to the second office action (typically the “final” office action) provides the applicant with an additional choice: appeal. This second response also should be structured such that it can be easily converted to an appeal brief.

The applicant has the option to provide a pre-appeal brief for formal review of the outstanding rejections. This provides a streamlined review process, short of an actual appeal. This procedure is not an actual appeal, which is heard by the Board of Patent Appeals and Interferences. A pre-appeal brief is reviewed by a panel of three examiners, one of whom is a supervisory examiner and another is the examiner of record. Whether or not to file a pre-appeal brief is a determination that should be made on a case-by-case basis. The most common scenario for filing a pre-appeal brief is when the applicant’s arguments are not persuasive to the examiner, and the applicant believes that claim amendments are unnecessary to overcome the rejection. However, the examiners reviewing the pre-appeal brief need only find one issue worthy of appeal to reject the brief. As a result, many pre-appeal briefs are unsuccessful.

In an actual appeal, the appeal brief and oral hearing are of primary importance. Too often, applicants are content to passively get a number, stand in line, and rehash to the Board arguments already in the record. This approach is criticized by four Board Judges (Chief Administrative Patent Judge Michael Fleming and Administrative Patent Judges Sally Lane, Linda Horner, and John Jeffery, Board of Patent Appeals and Interferences) in their report, “Effective Appellate Advocacy in Ex Parte Appeals Before the Board of Patent Appeals and Interferences” [PDF]. We believe that all-too-common approach fails to realize the opportunity an appeal provides for real advocacy, resembling patent litigation in federal court. It is, therefore, advantageous to utilize litigation techniques when drafting the brief and arguing an appeal.

A litigation-style oral argument may be the best way to convince the Board of the merits of your case. Techniques for crafting a successful oral argument include creating an effective bench book to highlight issues for the Board, designing exhibits to simplify explanation of the technology, and using a mock trial to perfect the argument.

First, we recommend providing the Board with a bench book. The bench book will include all information necessary to understand the issues on appeal, including documents related to the case, relevant legal authority, and information on the technology at issue. Four advantages of a bench book are:

  1. It forces the attorney to carefully consider the case and how best to explain and highlight the truly relevant issues.
  2. It provides an opportunity to frame the arguments, describe the technology in the most favorable light, and focus the Board.
  3. It will help the Board follow the argument and remain engaged.
  4. It will be a document the Board will have with them during deliberations.