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Abandon

0 (0%)

Appeal to BPAI

1 (16.7%)

PABR (seek pre-appeal briefing conference)

1 (16.7%)

RCE emphasizing claim amendments

4 (66.7%)

RCE emphasizing argument

0 (0%)

Seek after-final interview with examiner and/or supervisor

0 (0%)

Other

0 (0%)

Total Members Voted: 5

[ababab]

C'mon, guys! 100 page views in one day, but only 2 votes and 2 comments?  I can understand a busy practitioner not taking the time to comment, but all it takes is another mouse click (Amazon, anyone?) to log your experience in the poll above.  Add value!  Give something back to the profession!  :-)
 / Rant off  ...this comment added 24 hours after original post.

With all the recent adjustments in substantive and procedural law affecting patent applicants, and general impressions in the patent bar of an increasingly resistant examiner corps, it might be interesting to see what the latest and greatest strategies are for after-final prosecution.  I also noticed a discussion related to this subject, focusing on which big firms do the most BPAI appeals, over at http://www.patentlyo.com/patent/2009/02/law-firms-that.html.

Polls may attract more votes than comments, which is fine, but please consider leaving a comment too.   Especially if your choice is "Other," or there are informative details you could provide in a comment.  If the "last 12 months" limitation in the poll question skews your answer significantly, you may wish to consider only the last 6 months in casting your vote (e.g., post-Bilski rejections), and/or leave an explanatory comment.

[jc4patents]

     In 19 years of writing and prosecuting complex electronics applications (e.g., antennas, transceivers,
integrated circuits), I have never filed an appeal - I would estimate we have won allowance 70% of the
time on the initial application and 30% of the time with an RCE.

     One comment on your choices - I marked the one "RCE emphasizing narrowing amendment" but my experience
has been that the adjective "narrowing" is not necessarily appropriate - a great deal of the time, the amendment
is to craft around a reference I had not seen before so that the amendment moves the claimed structure in
a different direction than originally intended but may still be sufficiently broad.

     It is a quibble but I would have preferred an option to mark for RCE but not to make it sound like we
had to take second best - most of our allowed claims through an RCE are quite satisfactory.

[ababab]

Thanks, jc4!  I have edited the poll option to say "claim amendments" instead of "narrowing amendment."  IMO the amendments usually need to be narrowing at least in some potential way, even if the commercial value of the claimed invention does not change substantially.  But thanks for your "quibble" and your response!

[cheesepep]

Uh, I voted for "amend claims according to examiner's suggestions and hope for the best."

[ababab]

Uh, I voted for "amend claims according to examiner's suggestions and hope for the best."

Do you always get usable suggestions from the examiner?  Or do you mean simply "amend claims to get around the examiner's rejections and hope for the best"?

I'm assuming you do this via RCE, or do you just try to do a post-final amendment in the existing case?

BTW, Cheesepep, thanks for trying to vote, but it doesn't look as if you succeeded in voting. (Shades of Broward County, anyone? Just kidding.)

I can't tell who voted which way, but the poll is young enough that I can use my amazing, razor-sharp inductive reasoning powers to conclude that if you and jc4 both voted for RCE/amend, there would be more than one vote registered for that choice. Yet as of this writing there is still only one such vote. (<Bowing>, "Thank you ladies and gentlemen, it was nothing, really, just wait 'til you see my next one!")

[ababab]

I thought this was an interesting empirical observation:

Because there is very little cost difference between an appeal and an RCE, filing an appeal ***with the intent of reopening prosecution*** is often a more desirable approach. All six of the appeals that I have filed in the last 18 months have resulted in re-opened prosecution with new (and usually better) art and a non-final rejection. While this can increase the time of prosecution, it improves the quality of the resulting patent by forcing the examiner to find the best art. It also avoids the risk introducing speculative limitations, which can often happen with an RCE due to the fact that the examiner hasn't performed a thorough search.

Posted by: jeff | Feb 12, 2009 at 07:48 AM http://www.patentlyo.com/patent/2009/02/law-firms-that.html#comment-6a00d8341c588553ef010537224ffa970b

[ababab]

These, too:

In most instances, you should advise your client to appeal after a second (final or non-final) office action. Note the 800 pound gorillas listed at and near the top above. You may say what you will about these firms, but they know prosecution.

An RCE should never be filed unless an amendment is necessary to overcome a 102 or 103 rejection, and prosecution is closed. In the past things were different, but this is now. The faceless bureaucrats at the PTO don't give a sh_t about you and your client.

Posted by: John | Feb 12, 2009 at 08:36 AM

For anyone unfamiliar with the current PTO strategy, it goes like this:
1. Issue worthless first rejection over non-relevant prior art. Hope applicant goes away.
2. Rubber-stamp applicant's response as "unpersuasive", reiterate first rejections and make final. Hope applicant goes away.
3. If applicant files RCE, go to #1.
4. If applicant appeals, assume that applicant is not going to go away, so begin real examination.

Posted by: Actual Patent Attorney | Feb 12, 2009 at 09:28 AM

Are these viewpoints overly pessimistic in your experience?

[JimIvey]

Are these viewpoints overly pessimistic in your experience?

Absolutely not.  That's my experience precisely.

I tend not to see real examination on the merits until I've filed a Notice of Appeal.

Note that my approach requires fixing everything that needs fixing in response to the first Office Action.  If you don't (or if there's a change in focus/strategy), you'll have to file at least one RCE.

Regards.

P.S.  Oops, should have read the choices more carefully.  I selected appeal rather than Pre-Appeal....  (need a shorter name for that! -- PABR).

[ababab]

Note that my approach requires fixing everything that needs fixing in response to the first Office Action.  If you don't (or if there's a change in focus/strategy), you'll have to file at least one RCE.

If "fixing everything" in response to FAOM includes amending the claims, doesn't that give the examiner all the basis he needs to bring up new prior art on second rejection, and go final?  Maybe I misunderstood what you are saying.

(need a shorter name for that! -- PABR).

Done!  Thanks for the helpful input.

[JimIvey]

Note that my approach requires fixing everything that needs fixing in response to the first Office Action.  If you don't (or if there's a change in focus/strategy), you'll have to file at least one RCE.

If "fixing everything" in response to FAOM includes amending the claims, doesn't that give the examiner all the basis he needs to bring up new prior art on second rejection, and go final?  Maybe I misunderstood what you are saying.

Yes, assuming FAOM is First Office Action on the Merits (FOAM?).  Of course, Final Office Action on the Merits forms the same acronym.

Okay, to be fair, it helps if the focus/strategy was properly laid out at filing.  If I write the application and prosecute it, my focus/strategy doesn't change dramatically in response to the first OA.  So, my amendments, if any, tend to put a finer point on the focus -- typically avoiding an unintended interpretation of my original claim language or sidestepping some unknown prior art that's similar but not quite the same as what we're trying to cover.

In those cases, the 2d OA tends to be a "nuh-uh" rebuttal -- stating I'm unpersuasive or citing a nearly identical teaching in a new reference.  More than 80% of the time, no amendment is needed in response to the 2d OA.  So, I appeal.

I used to file the RCE (or whatever it was called back then), give the examiner her extra 2 counts, and get my allowance.  Then, I started getting the same lame rejections in 3d and subsequent OAs.  No more.  Now, I appeal everything.

To get through the PTO, you have to be right early and often.

Regards.

[ababab]

Yes, assuming FAOM is First Office Action on the Merits (FOAM?).  Of course, Final Office Action on the Merits forms the same acronym.

Okay, to be fair, it helps if the focus/strategy was properly laid out at filing.  If I write the application and prosecute it, my focus/strategy doesn't change dramatically in response to the first OA.  So, my amendments, if any, tend to put a finer point on the focus -- typically avoiding an unintended interpretation of my original claim language or sidestepping some unknown prior art that's similar but not quite the same as what we're trying to cover.

In those cases, the 2d OA tends to be a "nuh-uh" rebuttal -- stating I'm unpersuasive or citing a nearly identical teaching in a new reference.  More than 80% of the time, no amendment is needed in response to the 2d OA.  So, I appeal.

I used to file the RCE (or whatever it was called back then), give the examiner her extra 2 counts, and get my allowance.  Then, I started getting the same lame rejections in 3d and subsequent OAs.  No more.  Now, I appeal everything.

To get through the PTO, you have to be right early and often.

Got it.  Thanks.  I'm still hearing the older RCE approach recommended by some practitioners (outside the software arts).  I'd like to figure out if that is still good strategy in some arts, or if straight to appeal is the way to go.

So speak up, one and all!

[jc4patents]

    Although my recent experience (e.g., last 6 months) is limited, I have always had good
results through the RCE path. Typically, I ran out of options in the first path (up to a final) because
my original claims did not anticipate the Examiner's art but once I could address that art
via an RCE, I had good results.
     Maybe I was successful because I thought everyone did it this way.