Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[dab2d]

If done properly at the last action, it would not require a further search.

[khazzah]

If done properly at the last action, it would not require a further search.

Disagree. A new claim to priority moves the effective filing date earlier, thus changing the universe of prior art. Now the Examiner needs to search the new universe of prior art.

Plus, how are you make the showing under 1.116 as to why you didn't perfect priority earlier?

I say that perfecting priority is not one of the actions you can properly take after final.

[dab2d]

Trust me, my first inclination was to say it is not proper to file a CPD and an translation in an after final. However I started looking at it and had that question.

As for the PA, it does not increase the scope of prior art. I merely decreases it. Thus, it has already been searched. Ex are not supposed to find art for a rejection and then stop searching. Thus no new search should be required. A new rejection maybe, but not a new search. 

As for 1.116, is a priority document and a translation evidence? Maybe I am thinking too narrowly of evidence.

[patentatt]

Trust me, my first inclination was to say it is not proper to file a CPD and an translation in an after final. However I started looking at it and had that question.

As for the PA, it does not increase the scope of prior art. I merely decreases it. Thus, it has already been searched. Ex are not supposed to find art for a rejection and then stop searching. Thus no new search should be required. A new rejection maybe, but not a new search. 

As for 1.116, is a priority document and a translation evidence? Maybe I am thinking too narrowly of evidence.

I cannot find an explicit MPEP passage on point.

But I think that dab2d is right.  MPEP 904.03 explicitly states that examiners must search prior art that could be overcome by perfecting priority:

The best reference should always be the one used. Sometimes the best reference will have a publication date less than a year prior to the application filing date, hence it will be open to being overcome under 37 CFR 1.131. In these cases, if a second reference exists which cannot be so overcome and which, though inferior, is an adequate basis for rejection, the claims should be additionally rejected thereon.

[I'm glad that I'm not the only one who believes that examiners should actually be bound by chapter 900!]

See also MPEP 201.15.

Therefore, I don't think that the perfecting of priority should require more search of prior art.

However, perfecting priority does require a search/consideration of the certified copy, to ensure compliance with 35 USC 112 (and other formalities).  However, this strikes me as the kind of search/consideration that may be "nominal" or at least properly performed after final rejection and prior to allowing the application.

Also, it is not clear to me that perfecting priority constitutes either "amendments" or "evidence" as required to invoke rule 1.116.  It is clearly not an amendment.  It also does not seem to be "evidence," at least not in the traditional sense of a 1.130-132 declaration.  It strikes me as more like filing of a statement or a paper to satisfy a formality - filing fees, a translation, an oath/declaration, or a statement to disqualify a reference under 103(c).

And, of course, if the final rejection contains a rejection over a new reference that you are attempting to antecedent through 119, then you should be able to satisfy rule 116, even if we assume that rule 116 applies (since you could not have been expected to earlier traverse a rejection that wasn't yet stated).

[Note that 706.07a - which governs when rejections can be final - states that a statement under 103(c) to disqualify a reference can be used to make a next rejection final because it "amends the application."  I am not sure if this only refers to amendments under 37 CFR 1.71(g) or if refers to all disqualification statements under 103(c).  At least amendments under 71(g) ostensibly amend the application.  But it seems to me that good policy would not permit any next rejection to final regardless.  This issue is not clear to me?]

[khazzah]

Also, it is not clear to me that perfecting priority constitutes either "amendments" or "evidence" as required to invoke rule 1.116.  It is clearly not an amendment.  It also does not seem to be "evidence," at least not in the traditional sense of a 1.130-132 declaration.  It strikes me as more like filing of a statement or a paper to satisfy a formality - filing fees, a translation, an oath/declaration, or a statement to disqualify a reference under 103(c).

This seems to be the dispositive issue ... if the priority claim is "evidence" then you have to comply with 1.116, but if it's not evidence, then you don't.

I don't know the answer to this question. Maybe you should just file the doc perfecting the claim before the 2-month date and see what happens.

Patentattt compared the priority claim to a "statement to disqualify a reference under 103(c)." I'm pretty sure that the common assignee statement is something you have do before final.

[patentatt]

I'm pretty sure that the common assignee statement is something you have do before final.

Can you find that in the MPEP or regulations?

The closest I can find is MPEP 706.02(l)(2):

The submission of such an amendment remains subject to the rules of practice: e.g., 37 CFR 1.116, 1.121, and 1.312. For example, if an amendment under 37 CFR 1.71(g) is submitted in an application under final rejection to overcome a rejection under 35 U.S.C. 103(a) based upon a U.S. patent which qualifies as prior art only under 35 U.S.C. 102(e), the examiner may refuse to enter the amendment under 37 CFR 1.71(g) if it is not accompanied by an appropriate terminal disclaimer (37 CFR 1.321(d)). This is because such an amendment may necessitate the reopening of prosecution (e.g., for entry of a double patenting rejection).

Which only applies to "amendment(s)" under rule 1.71(g).  It does not seem to apply to mere lawyer arguments or statements about common ownership.

[As I indicated in my previous response, the distinctions between when you using 1.71(g), and when you just make a generic statement of common ownership, are not 100% clear to me...]

[khazzah]

I'm pretty sure that the common assignee statement is something you have do before final.

Can you find that in the MPEP or regulations? The closest I can find is MPEP 706.02(l)(2).

I did a cursory search in the MPEP before posting and all I found was the same section you found. When I made my comment, I was thinking of a BPAI decision which indicated that common ownership required "evidence":

Appellants assert that the Sander reference should be disqualified as prior art due to common ownership. We disagree. Appellants did not timely file evidence of common ownership. Instead, Appellants merely state that “Appellant just realized Sander is only available as prior art under 35 US.C. §102(e) [sic]” and “Sander is disqualified as prior art under 35 U.S.C. § 103(c) since the instant Application and Sander were. . . [commonly] owned.” (App. Br. 9, 10.) (emphasis added). While Appellants’ statement
may provide adequate evidence of common ownership ( see MPEP § 706.02(l)(2)(II)) if presented during prosecution, the Examiner has the discretion to enter evidence on the record after a final rejection, and such a decision is petitionable, but not appealable.

I can't provide a cite to this BPAI decision, as it seems the search capability of the BPAI site isn't working right now.

As I indicated in my previous response, the distinctions between when you using 1.71(g), and when you just make a generic statement of common ownership, are not 100% clear to me...]

Many things about what's appropriate after final are not 100% clear to me. In fact, the basic question of the meaning of "evidence" is not clear to me. As I recall, one good thing about the proposed-but-suspended-appeal-rules was a clarification about this important term.

[patentatt]

I did a cursory search in the MPEP before posting and all I found was the same section you found. When I made my comment, I was thinking of a BPAI decision which indicated that common ownership required "evidence":

Appellants assert that the Sander reference should be disqualified as prior art due to common ownership. We disagree. Appellants did not timely file evidence of common ownership. Instead, Appellants merely state that “Appellant just realized Sander is only available as prior art under 35 US.C. §102(e) [sic]” and “Sander is disqualified as prior art under 35 U.S.C. § 103(c) since the instant Application and Sander were. . . [commonly] owned.” (App. Br. 9, 10.) (emphasis added). While Appellants’ statement
may provide adequate evidence of common ownership ( see MPEP § 706.02(l)(2)(II)) if presented during prosecution, the Examiner has the discretion to enter evidence on the record after a final rejection, and such a decision is petitionable, but not appealable.

Ha - good point.

Similarly, MPEP 706.02(l)(2) states:

A statement such as "Application X and Patent Z were, at the time the invention of Application X was made, jointly owned by Companies A and B" would be sufficient evidence of common ownership.

I don't know why this statement is considered "evidence" - at least not "evidence" in any sense forbidden by the Office's policy on final rejections and compact prosecution.  The statement here, and in that (likely non-precedential) BPAI decision, eviscerates any distinction between "evidence" and mere lawyer arguments, especially considering that every statement a practitioner makes in a paper is bound by the certification and ethic rules of 37 CFR 1.4 and 10 et seq.  Is the BPAI here implying that every statement an attorney makes after final is "evidence" and, therefore, governed by rule 116, even though examiners routinely consider "mere attorney argument" after final rejection that does not satisfy rule 116?

The whole policy behind final rejections and compact prosecution is to prevent applicants from untimely presenting issues that would unduly extend or delay prosecution.  But a statement of common ownership does not do this.  As explained above (and as dab2d agrees), the statement merely satisfies some formalities to overcome the prior art of record, which should be the best art available.  Although the Examiner must ensure compliance of the priority document with 112, this is a routine task and generally not unduly burdensome after final.

Also, in contrast to a rule 131 or 132 declaration, which can appear out of the blue, the Examiner should reasonably expect applicant to perfect priority.  In fact, although not stated in Rule 1.116, "whether the examiner should expect the amendment" is explicitly made a factor for whether an examiner can make a new rejection final in MPEP 706.07(a).  I would say that a similar policy should apply to rule 1.116: "evidence" of common ownership should be entered and considered when the Examiner should have expected or foreseen that the "evidence" would be submitted.

Note that this distinction between "evidence" and mere "lawyer argument" is a major issue in the pending Hyatt Supreme Court case, as discussed in this excellent amicus brief from Verizon:

http://www.americanbar.org/content/dam/aba/publishing/previewbriefs/Other_Brief_Updates/10-1219_neutralamcu4hightechpatentowners.authcheckdam.pdf

Many things about what's appropriate after final are not 100% clear to me. In fact, the basic question of the meaning of "evidence" is not clear to me. As I recall, one good thing about the proposed-but-suspended-appeal-rules was a clarification about this important term.

I agree that what constitutes "evidence" is not clear.  In light of the BPAI decision, and esp. the statement in 706.02(l)(2) (which I quote above), I think your position that the "evidence" cannot be submitted after final is on better ground.  I still think that there are technical, and esp. policy, arguments for the opposite conclusion, as outlined above.

The question of Rule 1.71(g) amendments raise a different question.  It's not clear to me when a Rule 1.71(g) amendment is required, and when it is not.  But (unlike the issue of "evidence" discussed above), this just reflects a gap in my own understanding, and not an inherent imprecision in the language used.  A rule 1.71(g) amendment is clearly an "amendment," whereas a statement by a practitioner of common ownership is "evidence" in only a controversial sense.  A rule 1.71(g) amendment is not always required, and I don't have enough experience to know when it is required - it relates to subtleties of 103(c) and joint ownership agreements.  Maybe someone here can help explain this latter issue...

[NJ Patent1]

Wrt 706.02(l)(2): "I don't know why this statement is considered "evidence" - at least not "evidence" in any sense forbidden by the Office's policy on final rejections and compact prosecution ..."  IMO it rests on the posture of the case, a rejection (properly) being made final vs. response to a putatively proper final rejection. 

I guess I take a wider view of “evidence”, something that is probative of an issue of fact of at least some consequence.  Here the issue of fact is whether there was / was not common ownership.  Just because the Office almost always credits the evidence (statement of common ownership), doesn’t make it not-evidence. 

Although I agree that a policy argument can be made that the statement should not be precluded after final, I also see a policy argument for “keeping it clean” - before final (706.02) vs. after final (R116).  And where do we stop if the statement is evidence under my liberal standard?  Ever since I started practicing law, I’ve been breaking my neck sliding-down such slippery slopes (and getting impaled on multiple “prongs”, the law is not just a demanding mistress, she plays rough!) 

Concerning the OP, IMO merely “perfecting” a priority claim (vs substantively asserting it in a paper) is a “ministerial act”, if the priority claim has otherwise already been properly made.  Just log it and toss it in the file wrapper.  If a R116 was otherwise 100% compliant, my GUESS is that it would be accepted.  but I've never waited so long.   

[khazzah]

Concerning the OP, IMO merely “perfecting” a priority claim (vs substantively asserting it in a paper) is a “ministerial act”, if the priority claim has otherwise already been properly made. 

Your distinction between "perfecting" something already asserted and asserting something for the first time makes sense to me.

Though I'm not sure I know which actions fall into which category.

With respect to removing a commonly owned patent under 103(c), it's not until the Examiner uses a particular commonly owned reference in a rejection that you remove it by making a statement of common ownership. Thus, in my mind, you're not perfecting but asserting for the first time -- even though the underlying facts of common ownership are present from the beginning.  So you would have to follow After Final rules when you do so.

With respect to a foreign priority claim, it seems like if you assert a claim to priority at filing (via ADS, spec, transmittal, etc.), but wait until a rejection to file the certified copy of the foreign app, then filing the certified copy is merely "perfecting". So you don't have to bother with After Final procedure. [I think this is OP's scenario, since he did use the term of art "perfecting priority".]

How about a third hypo ... What if you completely forgot to include claim to priority (US or foreign) at filing, but you're still within the 4 month/16 month window allowed by 1.78? You get a rejection and realize you can remove the reference with a claim to priority, so you file a supplemental ADS and/or an amendment to spec.  Is this "perfecting" or "asserting for the first time"?

Off the cuff, I'd say "asserting for the first time", such that you need to follow After Final procedure.

[NJ Patent1]

"Though I'm not sure I know which actions fall into which category."

Karen: As you intuited, I used “perfecting” in the ministerial sense (cf. UCC security interest, recording a mortgage in the county Deed's Office).  As you suggest, I made the priority claim in an ADS and in a Declaration and/or a spec amendment (I wear "belts and suspenders", bet u do 2)  The only thing missing is a ribbon copy of the priority document.  Concerning “substantive” I’m referring to the case where I have to argue that a claim is entitled to the benefit of the priority date and I need the ribbon copy (and maybe a certified translation).  See ur hypo below.  IMO I’m raising a fact issue - support or no support in the priority document.  It appears we are on the same page?

"Thus, in my mind, you're not perfecting but asserting for the first time."  I agree.

“ … even though the underlying facts of common ownership are present from the beginning.  So you would have to follow After Final rules when you do so." (underscore supplied)

Either the traffic signal was red, yellow, green, or not working at the time of the auto accident.  In the law - even administrative law - some “finder of fact” has to decide the "fact" based on "evidence" presented.  No? 

"How about a third hypo ... What if you completely forgot to include claim to priority (US or foreign) at filing, but you're still within the 4 month/16 month window allowed by 1.78? You get a rejection and realize you can remove the reference with a claim to priority, so you file a supplemental ADS and/or an amendment to spec.  Is this "perfecting" or "asserting for the first time"?

"Off the cuff, I'd say "asserting for the first time", such that you need to follow After Final procedure".

I agree this is “asserting” as above.  But as a practical matter it would likely come-up before final?

[NJ Patent1]

Just to complicate my own post. "is my distinction between 'ministerial' and 'substantive' just a tautaology for the difference between 'procedural' and 'substantive'?"  Frequently surfaces in administrative law cases.   

[Isaac]

Perhaps it matters whether or not you've had a previous chance to address the reference.

If there was no reason to address the reference at the time of non-final, then you could certainly make an argument that you have good cause to be able to introduce evidence now.   For example if the new reference addressed an amendment that you made after the non-final office action, it would only seem fair that you should be able to address the reference now.

Further, the examiner would have been well aware that you had the possibility of overcoming the reference by perfecting priority at the time the rejection was made, so I don't see how the examiner can argue that doing so even at Final is unfair.

In any event, I would strongly consider filing an After Final response in this situation, although I'd want to do it as soon after receiving the OA as possible.   Often (if not most of the time), if the examiner uses a reference that the applicant has a high probability of removing, it is because the examiner hasn't got anything else.   I would expect that the examiner would be motivated to allow the case.

I would treat a 103(c) a little differently than perfecting priority.   Overcoming a 103(c) requires only statements from the attorney.   Since no evidence is required, I'd do it anytime.   Even after final.

[patentatt]

Perhaps it matters whether or not you've had a previous chance to address the reference.

If there was no reason to address the reference at the time of non-final, then you could certainly make an argument that you have good cause to be able to introduce evidence now.   For example if the new reference addressed an amendment that you made after the non-final office action, it would only seem fair that you should be able to address the reference now.

Right.  I mention this above: it fits comfortably within 1.116(e) ("An affidavit or other evidence [...] may be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented.")

Further, the examiner would have been well aware that you had the possibility of overcoming the reference by perfecting priority at the time the rejection was made, so I don't see how the examiner can argue that doing so even at Final is unfair.

If only the standard was "it's not fair!"  I agree though that there are good policy arguments in favor of allowing applicant to perfect priority (see above).

In any event, I would strongly consider filing an After Final response in this situation, although I'd want to do it as soon after receiving the OA as possible.   Often (if not most of the time), if the examiner uses a reference that the applicant has a high probability of removing, it is because the examiner hasn't got anything else.   I would expect that the examiner would be motivated to allow the case.

That was my suspicion too.  It's based on the assumption that the examiner could not find better art.  My gut feeling is that examiners can almost always find better art.  Senior partners who handle big reexams have told me the same: give them $200,000 for prior art searches and they will find better art (almost always).  Because examiners have such little time to examine apps, they tend to stop with the first decent reference that they find.

For example, the PTO's own statistics show that only ~3% of Pre-Appeal Briefs results in allowance - the other ~37% of the time, the examiner finds new art (usually/hopefully better art).  If the examiners were following MPEP 900 and only apply the best art, then the 3% number makes absolutely no sense: virtually all successful PABRs should result in allowance (i.e. 3%+37% = 40%).  That doesn't happen at all, because examiners don't apply the best art, because they don't have enough time, and because the count system doesn't really incentive them to do so.  Instead, they will try to squeeze an RCE out of an application that can be reasonably rejected again.  [Some examiners profess to never try to squeeze RCEs out of applications - I don't really believe them.]

I would treat a 103(c) a little differently than perfecting priority.   Overcoming a 103(c) requires only statements from the attorney.   Since no evidence is required, I'd do it anytime.   Even after final.

As noted above, the MPEP and BPAI likely consider even a mere attorney statement under 103(c) to be "evidence."  And, from the opposite side, I would argue that a certified priority document is not evidence in the sense of rule 116.  Unfortunately, these issues are not really clear...

[Isaac]

For example, the PTO's own statistics show that only ~3% of Pre-Appeal Briefs results in allowance - the other ~37% of the time, the examiner finds new art (usually/hopefully better art).  If the examiners were following MPEP 900 and only apply the best art, then the 3% number makes absolutely no sense:

"The best art" is very subjective and fluid.   Once the examiner has seen your arguments, he might well change his mind about what art is the best.  But the examiner is not going to change art until forced to do so because the examiner wants to go final.

On the other hand, the examiner knows that art that can be removed by 103(c) or by perfecting priority is never a great choice.   The MPEP warns the examiner to search for backup art when removable art is used.  So presumably, any time you remove a piece of art, the examiner should not be able to fall back on the "requires further consideration or search", because he was supposed to do that search before sending out the OA.

As noted above, the MPEP and BPAI likely consider even a mere attorney statement under 103(c) to be "evidence."  And, from the opposite side, I would argue that a certified priority document is not evidence in the sense of rule 116.  Unfortunately, these issues are not really clear...

Likely?  Surely not. A mere attorney statement is never considered to be evidence.   If the MPEP is going to prohibit you from relying on 103(c), it wouldn't be by redefining evidence. 

If the priority document is not in English, you need to do more than simply submit the priority document.   Those other things may be the trip up.