[Patentpractice] [External Sender]Examiners Who Refuse to Allow Cases

[David Boundy]

I have included such things in the introduction to my appeal briefs -- but
only where I've got objective evidence (evidence in the technical sense,
like Juristat statistics or some such thing).   I regularly start my appeal
briefs with sentences like "This is an appeal from an eighth action.  In
appeals after the third and sixth actions, all positions of the examiner
were reversed.  The errors raised in this Appeal Brief track the errors
raised in those two earlier appeal briefs..."    No adverbs.  All calm and
factual, but start by setting expectations that this examiner is acting
outside the bounds of rational discourse.   Remember that the Board is not
the only audience for an Appeal Brief.  An Appeal Brief is also directed to
the Appeal Conference (specifically the SPE), and to prime the SPE to be
reluctant to sign off on any new ground in the Examiner's Answer.   Also
make a statement that "This drives up average pendency in the Art Unit" --
hit the SPE in the pocketbook.

On Mon, Dec 23, 2024 at 1:48 PM Roger Browdy via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> I have received an examiner report on a certain examiner that has forced
> us into over 8 years of prosecution over many applications and refuses to
> allow anything, despite the product having achieved orphan drug acceptance
> (i.e., an important invention).  The report shows that she allows 9.2% of
> her cases, compared to 40% allowance rate for her art unit.  She is one of
> those examiners who consider that it is their job to refuse patents rather
> than to help an applicant to obtain a valid patent, which is the examiner's
> true job (at least according to John Doll when he was a Group Director).
> Anyway, my question is whether I should bring up this fact in my Request
> for Pre-Brief Conference and/or in my Appeal Brief.  Pros and cons?
>
> Roger L. Browdy
> Partner
> _____________________________________________
> FisherBroyles, LLP
> direct: +1 202-277-5198
> roger.browdy at fisherbroyles.com
> www.fisherbroyles.com
>
> The information contained in this e-mail message is only for the personal
> and confidential use of the intended recipient(s). If you have received
> this communication in error, please notify us immediately by e-mail, and
> delete the original message.
>
>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>


-- 


*       [image: Cambridge Technology Law LLC]
<https://www.iam-media.com/strategy300/individuals/david-boundy>*

Listed as one of the world's 300 leading intellectual property strategists
<https://www.iam-media.com/strategy300/individuals/david-boundy>

Articles at http://ssrn.com/author=2936470 <http://ssrn.com/author=2936470>
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>

Click here to add me to your contacts.
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>

* David Boundy
<https://www.iam-media.com/strategy300/individuals/david-boundy>*

DBoundy at cambridgetechlaw.com <dboundy at cambridgetechlaw.com> / +1
646.472.9737 <%2B1%206464729737>

Cambridge Technology Law LLC
686 Massachusetts Avenue #201, Cambridge  MA  02139
http://www.CambridgeTechLaw.com
http://www.linkedin.com/in/DavidBoundy
mailing address
PO Box 590638
Newton MA   02459

This communication is a confidential attorney-client communication intended
only for the person named above or an authorized representative.  Any
dissemination, distribution, or copying of this communication is strictly
prohibited, whether by the author or recipients.  Any legal, business or
tax information contained in this communication, including attachments and
enclosures, is not intended as a thorough, in-depth analysis of specific
issues, nor a substitute for a formal opinion, nor is it sufficient to
avoid legal or other adverse consequences to the recipient. Unless you are
the addressee (or authorized to receive for the addressee), you may not
copy, use, disclose or distribute this communication or attribute to the
Firm any information contained in this communication. If you have received
this communication in error, please advise the sender by replying to this
message or by telephone, and then promptly delete it.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20241223/992f1923/attachment.html>