The PTAB Bar Association’s Annual Conference in March included a panel of Administrative Patent Judges who offered commentary on best practices in ex parte appeals from original examination and reexaminations. The participating APJs were Lead Administrative Patent Judge Rae Lynn Guest and Administrative Patent Judge James T. Moore.
The panel began by discussing statistics on ex parte appeals, which the Patent Office published in January 2019 (and available here), noting that the PTAB has significantly reduced its backlog of pending appeals, from over 26,000 in FY12 to a little over 10,000 in FY19. In doing so, the PTAB has reduced the average pendency of appeals to approximately 14 months, with an average pendency of 17 months in art units 3611-3693 (business method and mechanical art units) and an average pendency of under 12 months in electrical and computer-related art units. Because of this slight imbalance, Judges Guest and Moore noted that the PTAB recently undertook internal efforts to reduce the average pendency in the business method and mechanical art units so as to be more in line with the electrical and computer-related art units.
The panel then discussed outcomes for appeals decided by the PTAB in FY19. In FY19, the PTAB affirmed the Examiner’s decision 56.4% of the time, reversed the Examiner’s decision 32.2% of the time, and affirmed-in-part the Examiner’s decision 9.3% of the time, while dismissing or remanding the remaining 2.1% of appeals for various reasons. Judge Guest noted that these outcome statistics are generally consistent with outcome statistics from the last 20 years. Interestingly, however, the practitioners on the panel indicated that they are generally not concerned with Examiner or PTAB statistics.
The panel then discussed considerations for determining whether an application is ready for appeal. For the most part, the panel focused on traditional considerations, such as business factors (e.g., is the application directed to a product?), legal factors (e.g., how broad are the claims? will it be easy to detect infringement?), timing, costs, and alternative routes (e.g., RCE, Pre-Appeal, AFCP).
The panel then turned to the most interesting topic of all (at least to those practitioners in attendance) – strategies and best practices for drafting appeal briefs. Among the best practices the panel offered were to treat the Examiner with respect and avoid regurgitating chunks of case law, unless that case law is directly relevant to the facts at hand. The APJs also offered several tips and best practices: (1) present a reasonable number of legitimate issues (i.e., don’t throw the kitchen sink at the PTAB by, for example, arguing that a reference is non-analogous art); (2) use headings and sub-headings, which make the brief easy to read; (3) do not argue un-claimed limitations; and (4) make sure that any evidence being used in the brief was considered by the Examiner.
The panel next discussed oral hearings. The APJs noted that appellants requested oral hearings in only 9% of appeals. A majority of those appeals are decided on the briefs anyways, according to these APJs. The APJs noted that they find oral hearings helpful if the issues and/or the technology at issue is/are complicated, to highlight how difficult the invention was to conceive and reduce to practice, or to highlight the best argument (when multiple arguments are presented).
The panel closed by discussing requests for rehearing after the PTAB decision has been issued. The panel did not specifically discuss statistics as to the outcome of requests for rehearing, but the APJs made it clear that those requests are rarely granted, absent intervening case law. Indeed, the APJs observed that many requests for rehearing simply repeat what was already argued in the briefs, instead of pointing to specific mistakes made by the PTAB in issuing its decision. For example, Judge Moore advised that parties requesting rehearing specifically point out in the record where the mistake was argued and where it was missed.
For practitioners unfamiliar with the appeals process, the Patent Office offers helpful FAQs on its website, available at this link.