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

[Sarah Adriano]

Same.  Thanks David.

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From: Patentpractice [mailto:patentpractice-bounces at oppedahl-lists.com] On Behalf Of David Boundy via Patentpractice
Sent: Monday, December 23, 2024 11:10 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: David Boundy <PatentProcedure at gmail.com>
Subject: Re: [Patentpractice] [External Sender]Examiners Who Refuse to Allow Cases

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<mailto: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
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