[Patentpractice] New Examiner?
Doreen Trujillo
DTrujillo at vlplawgroup.com
Thu Dec 7 09:24:55 EST 2023
I have had the reverse happen. I succeeded on appeal at oral argument because the Board was not understanding the invention/distinction from the art until I drew it on the white board.
But I agree you need to know when to be quiet. I did not use my rebuttal time in a Federal Circuit appeal because it was clear I did not need to do so.
Doreen
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Doreen Y. Trujillo
Partner | VLP Law Group LLP
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Roger Browdy via Patentpractice
Sent: Thursday, December 7, 2023 9:01 AM
To: Scott Nielson <scnielson at outlook.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Roger Browdy <RLBrowdy at browdyneimark.com>
Subject: Re: [Patentpractice] New Examiner?
Scott, I don’t remember exactly, but I think it was one of the patent groups programs on oral hearings given by BPAI examiners in chief (am I dating myself?), where they gave this piece of advice that clearly made an impression on me. Since you asked, I Googled it (apologies to trademark practitioners). Here is one appellate judge who said essentially the same thing in the first sentence: https://www.jamsadr.com/blog/2022/how-not-to-argue-an-appeal-a-former-judges-view<https://www.jamsadr.com/blog/2022/how-not-to-argue-an-appeal-a-former-judges-view>, “I agree with conventional wisdom, which says that all things being equal, you can never win an appeal solely on oral argument, but you can lose. I have seen it happen, and not infrequently.” That’s not to say don’t do it. Just be very prepared and sure of your case.
Roger
From: Scott Nielson <scnielson at outlook.com<mailto:scnielson at outlook.com>>
Sent: Wednesday, December 6, 2023 7:51 PM
To: Roger Browdy <RLBrowdy at browdyneimark.com<mailto:RLBrowdy at browdyneimark.com>>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Subject: Re: [Patentpractice] New Examiner?
Roger, I'd like to learn more about this. Where did the PTAB judges say this?
Scott Nielson
801-660-4400
________________________________
From: Roger Browdy <RLBrowdy at browdyneimark.com<mailto:RLBrowdy at browdyneimark.com>>
Sent: Wednesday, December 6, 2023 4:52 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Scott Nielson <scnielson at outlook.com<mailto:scnielson at outlook.com>>
Subject: RE: [Patentpractice] New Examiner?
Think carefully about oral hearings. Many a PTAB judge has opined that more cases are lost at oral hearing than won.
Roger
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Scott Nielson via Patentpractice
Sent: Wednesday, December 6, 2023 5:44 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Scott Nielson <scnielson at outlook.com<mailto:scnielson at outlook.com>>
Subject: Re: [Patentpractice] New Examiner?
I agree with what David said. I appeal a lot of poor rejections that are withdrawn by the USPTO at either the pre-appeal brief or appeal brief stage. Many of these are rejections made by junior examiners whose supervisors rubber stamp rejections but will only take a close look when forced to do so by an appeal.
However, if you appeal the rejection of a primary examiner and it's relatively close (e.g., you are disputing the sufficiency of the reasons for combining references provided by the examiner, etc.), then there is a good chance it will be forwarded to the Board.
My other suggestion is to request an oral hearing unless you are truly confident the examiner is wrong. An oral hearing allows you to make your case without the examiner present (they rarely show up). I have won a lot of appeals without an oral hearing, but this most recent case that I lost has me rethinking that approach. Of course, the benefit of an oral hearing must be considered in view of the additional cost. That said, I think moving forward my default will be to recommend an oral hearing.
Anyway, good luck!
Scott Nielson
801-660-4400
________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Katherine Koenig via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Sent: Wednesday, December 6, 2023 1:35 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Katherine Koenig <katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>>
Subject: Re: [Patentpractice] New Examiner?
Thank you to everyone who replied. My impression of chances of success were closer to what Scott had written, but I’m very glad to see David’s numbers!
Best regards,
Katherine
Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of David Boundy via Patentpractice
Sent: Wednesday, December 6, 2023 7:15 AM
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Cc: David Boundy <DavidBoundyEsq at gmail.com<mailto:DavidBoundyEsq at gmail.com>>
Subject: Re: [Patentpractice] New Examiner?
Scott's 60% affirm rate isn't the whole story. Some years ago (like 15) I asked for ALL the statistics by Freedom of Information Act. When you add up --
-- reverse on pre-appeal
-- examiner can't write an Examiner's Answer and gives up
-- Board reverses
the win rate is 70-80% The Board affirms only about 20% of appealed issues.
This varies a lot by technology and issue. For example, the affirm rate for § 101 Alice issues is much higher than for § 112 and § 102/103
On Tue, Dec 5, 2023 at 9:50 PM Scott Nielson via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:
Regarding PTAB stats, this page<https://www.uspto.gov/patents/ptab/statistics> has what you are looking for. In FY 2023<https://www.uspto.gov/sites/default/files/documents/fy23_appeal_receipts_and_dispositions_september2023_.pdf> (just ended in Sept), the PTAB affirmed the examiner 58.3% of the time, affirmed-in-part 9.1% of the time, and reversed 31.9% of the time.
I file a lot of appeals and I've had good luck. However, I just lost one the other day where the PTAB rehabilitated the examiner's lousy rejections (complete with new grounds of rejection for some of the dependent claims I thought we would for sure win on). It goes to show that there is always an element of uncertainty when you go to the Board.
Scott Nielson
801-660-4400
________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Katherine Koenig via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Sent: Tuesday, December 5, 2023 6:42 PM
To: patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com> <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Katherine Koenig <katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>>
Subject: [Patentpractice] New Examiner?
Hi everyone,
I’m prosecuting a US-inbound case for a mechanical product. I’ve had a terrible go with the Examiner, who appears to be steered by his SPE’s opinion about the case. According to PatentBots, the Examiner has a 64% 3-year grant rate (slightly lower than his art unit) and his SPE has a 0% 3-year grant rate (slightly lower than [insert villain here]). The client is an FA, and he and his client are both really hoping for a better chance of patentability.
My understanding is that there’s no way to request a different Examiner, and even DIVs, CONs, and CIPs are likely to be assigned to the same Examiner. The only way to get a different Examiner is to present claims that would move the application to a different art unit. Is this correct? I hope someone has a magic strategy that I don’t know about!
Statistically, does the PTAB uphold a rejection more often than it reverses? Any input or suggestions would be welcome, thank you!
Best regards,
Katherine
Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>
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