Board of Patent Appeals and

If the patent appHcation is allowed based on an appHcant s response to the second office action, examination is ended. However, if the patent examiner advises the patent appHcant that the rejections will be maintained and the appHcant views these rejections as insurmountable, the patent appHcant may choose to abandon the patent appHcation. If the patent examiner maintains the earHer posed rejections, and the patent appHcant disagrees with the examiner, the patent appHcant may appeal the examiner s decision to the Board of Patent Appeals and Interferences, which is comprised of adininistrative judges. The appeal process involves the noticing and briefing of the appeal, and oral argument before and a subsequent decision from the Board of Appeals and Interferences (step 10). Usually the oral argument is presented to, and subsequent decision is received from, a panel of three administrative judges selected from the full complement of the Board. If the Board panel decides in the appHcant s favor (step 11), the patent appHcation will be passed to issuance (step 12). If the Board decides in the examiner s favor, the patent appHcant will have to consider whether to refile the appHcation and request another round of examination or seek court review. 

From a procedural standpoint, unfavorable patent decisions by USPTO examiners (e.g., rejected patent claims/applications) can be appealed to the U.S. Board of Patent Appeals and Interferences (the Board). If the outcome at the Board is unfavorable to the applicant then the applicant may appeal the decision to the Court of Appeals of the Federal Circuit (CAFC). Unfavorable decisions from the CAFC may be further appealed by petition for a writ of certiorari to the U.S. Supreme Court.6 While patent appeals from the Board to the CACF may be made as a matter of right, appeals from the CAFC to the Supreme Court are not. Due to the Supreme Court s broad jurisdiction and very limited capacity to hear cases, only a very small percent of cases that are appealed (approximately 1%) are heard (so good luck ).7 Patent litigation on the other hand involves the enforcement of patents that have already... 

Guaranteed adjustment basis (GAB)l Patent and Trademark Office failure to take certain actions within 14 months from filing date and four months from other events Patent and Trademark Office must mail an examination notification (first Office action including Quayle action or notice of allowability, restriction requirement and request for information, but NOT OIPE notice of incompleteness of application or other such notices) to applicant within 14 months of the filing date Patent and Trademark Office must also respond within four months to the applicant s reply to an office action or applicant s opening appeal brief Patent and Trademark Office must act within four months of a board of patent appeals and interferences (BPAI) or court decision, where allowable claims remain in the application Patent and Trademark Office must issue the patent within four months of date on which the issue fee is paid, and all outstanding requirements are satisfied. 

If the applicant is not successful in overcoming the examiner s rejections and the examiner makes the rejections final, several options remain. Again the applicant may simply abandon the application and, if the application has not been and will not be published, retain the invention as a trade secret. Or, the applicant can refile the application as a divisional, continuation, or continuation-in-part application and continue prosecution in the PTO. The applicant may also appeal the examiner s rejection to the Board of Patent Appeals and Interferences within PTO. If not satisfied with the Board s decision, the applicant may appeal that decision either to the Court of Appeals for the Federal Circuit based on the record before the PTO or to a federal district court for a de novo review. If the examiner s position is overturned, the Federal Circuit or the district court can order the PTO to issue the patent. Appeal to either the Federal Circuit or a federal district court destroys the secrecy of the application as well as that of the record of the proceedings within the PTO and thus destroys any trade secrets that may have been contained therein. 

With the first-to-invent system in the United States, it is sometimes necessary to determine which of two or more inventors (or groups of inventors) first invented the subject matter that is claimed in common by the parties. Interferences are the proceedings within the PTO for making such determinations. These proceedings, which are overseen by senior examiners within the PTO, are ultimately decided by the Board of Patent Appeals and Interferences in the PTO. The party who first conceives an invention and first reduces it to practice will normally be awarded priority and will be awarded the U.S. patent (142). This is not the case, however, if another party, who reduced the invention to practice at a later date, can prove that he or she was the first to conceive the invention and proceeded diligently to reduce it to practice from a time before the other party s date of conception. The diligence of the first to reduce the invention to practice is normally immaterial in the priority contest. 

Iftheissuance of apatent is delayed because of appellate review by the Board of Patent Appeals and Interferences or by a federal court, and the appeal is successful, the patent term is extended for a period of the appeal (up to 5 years). The extension is reduced by any time attributable to appellate review before the expiration of 3 years from the filing date of the application and for the period of time the applicant did not act with "due diligence." 35... 

In a further case relating to the structure of data stored on or in a record carrier used in a picture retrieval system, the European Patent Office s Boards of Appeal have considered the issue of patentability of a data structure [22]. Initially the patent application had been rejected on the grounds that the presentation of data was excluded from patentability (see above). However, in accepting an appeal filed by the patent applicant, the Board pointed out that there was a difference between the functional data, which controlled the technical working of the system, and the cognitive information, which represented the picture that could be retrieved and displayed. The Board stated that functional data relates to data that control the technical operation of the system. These data do not relate to the presentation of information, and thus data structures containing this information should be patentable. On the other hand, the cognitive information relates to the picture that could be retrieved and displayed. 

Any final action unfavorable to the patentee by the patent examiner may be appealed by the patent holder to the Board. Further appeal by the patent holder to the Court of Appeals of the Federal Circuit is possible (35 U.S.C. 141-147). The right of appeal in the ex parte reexamination proceeding is limited to the patent holder and not the reexamination requestor.60... 

What if the prior art would motivate one of ordinary skill in the art to make the applicant s claimed invention but for a different reason than that relied on by the applicant Should it matter The following example, taken from a CAFC opinion decided this exact question.31 The named petitioner, Dillon, was an assignor of the invention to Union Oil Company, whose application for patent was rejected in the USPTO. After unsuccessfully appealing to the USPTO Board of Appeals, the petitioner appealed to the CAFC and the rejection of the patentability of the claims was affirmed. The subject matter of the relevant claims was directed to compositions containing /c/ra-orthoesters in hydrocarbon fuels and methods of reducing particulate emissions using those fefra-orthoesters in hydrocarbon fuel. To clarify the subject... 

Let s quickly juxtapose this result with an enantiomer case having a different outcome. In re Adamson resulted from an appeal to the CCPA of denial of patentability by the USPTO Board of Appeals, which rejected claims 1-11 of the applicant s application directed to compounds having spasmolytic activity and processes for making same.75 The stated reason for the rejection is that the compounds were obvious in view of the prior art disclosure of the racemic mixture. Claim 1, which was deemed by the court to be a typical claim of the invention, is reproduced in Figure 8.19 together with the structures of the claimed compounds. 

The Enlarged Board of Appeal of the European Patent Office made the following comments when questioned about a recent case involving transgenic plants (Novartis G 0001/98), in relation to Article 53(a) of the European Patent Convention (EPC), which establishes that inventions that are contrary to public morality and customs are not patentable ... 

Another type of rejection for obviousness is based upon a combination of references and disclosures in the prior art of compounds which might readily be converted to claimed compounds. In one instance (3), reversing the examiner and the board, the Court of Customs and Patent Appeals position was that such conversion would not be obvious in the absence of any suggestion in the prior art as to why it should be made.. . . The mere fact that it is possible to find two isolated disclosures which might be combined to produce a new compound does not necessarily render such production obvious unless the art also contains something to suggest the desirability of the proposed combination. ... 

Thus, in the year 1950, an inventor named Tolkmith (IS) presented a patent application claiming a certain methane phosphonic chloride. The only utility stated for the compound was that it was of value as an intermediate for the preparation of more complex phosphorus derivatives and as a constituent of a parasiticide. The Patent Office Board of Appeals in its decision, held that the applicant s showing of utility did not comply with Section 112 of the patent statutes requiring that the manner and process of making and using the invention be described in such exact terms as to enable one skilled in the art to make and use the same. The board went on to say ... 

On 27 May 1997, the Boards of Appeal of the European Patent office set aside the 1992 opposition to the Ajinomoto patent (European Patent Office 1997), and a New European Patent Specification was issued (Ajinomoto 1998). 

With regard to the second therapeutic use, as noted above, the EPO s Enlarged Board of Appeal approved a wording such as the use of a substance X for the manufacture of a medicine for therapeutic application . In the USA, the patentability of second therapeutic uses has been recognized for a long time and many methods of use patents may be granted for the same product. It is now possible to protect second therapeutic uses in many countries. Claims for second nonmedical use are also admitted by the Patent Laws of many countries. A claim covering a novel use of a known product will only cover the claimed use. Other uses of the compound and the compound as such are not protected. 

Canada does not offer an opposition procedure, but includes a reexamination procedure in its patent law. Re-examination may be requested for any claim or claims at any time during the term of the patent, but the evaluation is undertaken solely on the basis of prior art [74]. The Commissioner of Patents appoints a three-person re-examination board to undertake the review. Unlike the re-examination process in the United States, the board s decision is not the end, and an appeal can be launched within three months. 

Joint Appeal Against Human and Animal Patenting, Press Conference Text, May 17, 1995. Board of Church and Society of the United Methodist Church, Washington, DC, 1995. 

The deposit must be made under conditions that all restrictions on the availability to the public of the deposited culture will be irrevocably removed upon the granting of the patent. The Board of Appeals decision in Lundack indicated that a period of deposit equivalent to that required under the Budapest Treaty (i.e., stored for a period of at least five years after the most recent request for the furnishing of a sample of the deposited microorganism and, in any case, for a period of at least 30 years after the date of deposit) was a reasonable approximation of the requirement for an assurance of permanent availability of the culture to the public. Appropriate documentation in the form of a copy of the contract with the depository and/or an appropriate statement to show that the guideline requirements have been satisfied is required. 

For plants, until recently, higher plants - with a minor exception of Irish potatoes, Jerusalem artichokes, and first generation hybrids - were held to be unpatentable subject matter by the Patent Office. However, a recent Board of Appeals decision. Ex parte Hibberd, et al., has clearly held that they are. Probably no one is as nervous about manipulating the genetic structure of... 

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