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Topic: BPAI Appeal - new arguments (Read 11839 times) |
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Ned
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Re: BPAI Appeal - new arguments
« Reply #5 on: Aug 17th, 2006, 10:09am » |
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Can you explain the mysterious "count" system and bi-weeks? Thanks!
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dab2d
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Posts: 73
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Re: BPAI Appeal - new arguments
« Reply #6 on: Aug 17th, 2006, 10:18am » |
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the one thing I loved about working at the patent office is that you knew exactly what you had to do each week. It is based upon a count system. a long time a go, the PTO determined the average time it took to complete each case in each art. They then divided it by two. That gives you the time you get credit for for the first action and then dispostion (allowance, abandoment, or appeal).
The allowance of an RCE, the examiner would get a dispostion count, and a first action issue (2 counts) for a total of 3.
Example, say that the examiner's art breaks down to 10 hrs per count. The examiner must then have 8 counts by the end of the biweek. That means any combination of things that equal 8 counts.
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| « Last Edit: Aug 17th, 2006, 10:19am by dab2d » |
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Isaac
Senior Member
Posts: 3472
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Re: BPAI Appeal - new arguments
« Reply #7 on: Aug 17th, 2006, 10:40am » |
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on Aug 17th, 2006, 9:22am, JimIvey wrote:
I've never heard that mantra. However, the inclination to add new arguments in an appeal brief begs the question as to why you haven't put forth your best arguments earlier. It might have been possible to avoid the appeal altogether. |
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One reason the problem might arise through no fault of the practitioner is because the examiner provided a new line of argument in the Advisory Action in response to an entered amendment or considered argument presented after final.
The other issue is that the definition of "best argument" may change over prosecution. Is the best argument is a fresh one that the examiner does not have his heels dug in over but which might create some unwanted estoppel, or is the best argument the old one already made. When its time to appeal, should you use both?
I understand the feeling of wrongness about appealing using arguments not yet considered by the examiner, but the examiner does get a chance to respond and there is the opportunity to reopen prosecution. Also there is the issue the treatment of responses after final can be very cursory. Finally, IMO, a rigid rule exaggerates the adversarial nature of the proceedings. The Examiner has just as much responsibility to understand the holes in a rejection as does the Applicant.
At any rate someone at my firm forwarded me a voice mail message from someone at the BPAI confirming that the appeal brief could present new arguments.
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| « Last Edit: Aug 17th, 2006, 10:46am by Isaac » |
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Isaac
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dab2d
Junior Member
Posts: 73
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Re: BPAI Appeal - new arguments
« Reply #8 on: Aug 17th, 2006, 11:52am » |
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on Aug 17th, 2006, 10:40am, Isaac wrote:
The Examiner has just as much responsibility to understand the holes in a rejection as does the Applicant.
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I don't think that is a fair assumption. While I agree that an examiner should have a strong rejection, most are made in good faith.
It is the Attnys./agents who should find holes in the rejection. If the rejection is weak, the agent should poiint the weakness out. One we make more money and two we have more time. Even the board places all of the resp. on the agents, because any argument not made before the BAPI on appeal is waived. Why should the examiner's have more resp. than the judges?
If you are going to the board with a truly new argument (where the examiner has addressed your previous arguments) not presented before, I think you have done your client a dis-service. Call the Examiner, tell him about your new arguments, see if he is receptive, and file an RCE. Trust me, Examiners hate appeals, and he will work with you. And if you truly made a mistake, you can eat the fee and make your client happy. Plus you preserve all arguments for an appeal for an issue that you might actualy need to file.
just my thoughts as an ex-examiner. No one loves them. Peole love to give them more work and then complain about the quality of their examination...
If the end goal is to have a quality patent, then work with the examiner. Most of the time they will conceed when they are wrong and work with you to develop acceptable language. I always advise one to have a telephone interview with the examiner after the first rejection. so much more can be obtained through talking with them, than what they write.
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wallflower
Junior Member
Posts: 96
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Re: BPAI Appeal - new arguments
« Reply #9 on: Aug 17th, 2006, 12:15pm » |
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on Aug 17th, 2006, 11:52am, dab2d wrote:
Most of the time they will conceed when they are wrong and work with you to develop acceptable language.
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I really wish that were the case with Examiners more often. More often than not, I've had to appeal to get my message across.
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| « Last Edit: Aug 17th, 2006, 12:15pm by wallflower » |
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