Board of Patent Appeals and Interferences

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 the fourth and final portion of the interference, the record of each party is filed with the Patent Office oral arguments may be presented before a three-man Patent Office board a decision is rendered by the board, and appeal or re-opening of ex parte prosecution takes place. 

Hercules was eliminated from the interference in 1964 by the US Patent Office because of their late discovery and patent application date. Finally (it seemed), on 29 November 1971, the board finally awarded priority of invention to the senior party, Natta et al., and US Patent No. 3,715,344 was issued to Montedison on 6 February 1973. The defeated parties then appealed the decision with a Civil Action (US District Court of the District of Delaware, Civil Action 4319). In these 1980 hearings, it was concluded that Phillips was entitled to an invention date of no later than 27 January 1953. The district court also determined that Phillips had proved that Montedison had fraudulently withheld information from Patent Office examiners, and that this fraud was detrimental to Phillips case for priority of invention in the Patent Office . However, because of the conclusion that Phillips is entitied to priority on the basis of its constructive reduction to practice, the issue of Montedison s fraud would have no effect on Phiffips entitlement to priority. Therefore, the court found ffiat the crystalline polypropylene of the interference count was useful, novel, and non-obvious and therefore patentable to Phillips and... 

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