Special Feature -- What the Board of Patent Appeals and Interferences (BPAI) Can Learn from the NFL

Friday, January 22, 2010

Scott A. McKeown of Oblon Spivak & PatentsPostGrant.com

The difference between a successful and unsuccessful season for an NFL Football Team often times hinges upon the outcome of a single game. In some cases, a single play of a game can doom a team’s season or even a coaching/playing career. Due to the heightened importance of games in the NFL, indeed, the importance of every play, instant replay is utilized more often in this sport than in any other.

Instant replay is employed as a supervisory review mechanism, aided by video technology, to challenge referee decisions made during an NFL game. For example, if a referee mistakenly decides that a player has fumbled the football, the coach of the allegedly fumbling team can request a short conference whereby the deciding referee confers with other game officials on the decision, in view of video evidence (i.e., instant replay). In order to overturn the decision there must be clear visual evidence of a mistake.

Once the review conference is concluded, the referee turns on his microphone and addresses the requesting coach and fans as to the review determination. In every case, whether upholding or reversing a referee decision, the rationale arrived at by the conferees is communicated.

For example, if the decision is upheld the referee will provide an explanation such as "upon further review, the player lost possession of the football prior to his knee touching the ground, therefore the ball was fumbled and the play stands as called." Likewise, if the play is overturned, the referee will provide an explanation such as "upon further review the player’s knee touched the ground prior to the ball coming loose, since the ground cannot cause a fumble, the play is reversed."

The explanation of the review conference is of paramount importance as it provides guidance to the coaches and fans on the rules, referee interpretation methodology, standard of proof, etc. Based upon this repeated reinforcement, fans are better able to understand the game, the rules, and the referee perspective. As a result, coaches are less likely to request a replay unless they are fairly certain as to the correctness of their position based on past challenges.

So what does any of this have to do with the USPTO?

Well, imagine another fumble call being made on the field by an NFL referee. Now, after the conference, imagine the referee walking to the center of the field turning on his microphone and stating "after further review, we were right" This is the level of feedback currently provided in unfavorable Pre-Appeal Brief Conference Request determinations.

In 2005, the Pre-Appeal Conference Request was introduced as a pilot program to provide an appeal conference prior to instituting a full BPAI appeal process. Previously, the conference was only held after an Applicant filed a complete appeal brief. The rationale behind the Pre-Appeal Conference Request was to enable a quick supervisory review of Final Rejections (45 day turnaround), remove clear PTO mistakes or "PTO losers" (i.e., cases the Examiner would lose at the BPAI) from the appeal docket, and to save Applicant resources by avoiding the filing of complete appeal briefs.

Since 2005, the affirmance rate at the BPAI has increased significantly. While some may identify KSR as a factor in this trend, certainly the filtering of clear PTO losers from the appeal docket has also impacted the affirmance rate. In this regard, the Conference Request program has been quite successful.

But what about cases the Examiner will win at the BPAI, "PTO winners?"

Currently, Chief Judge Fleming is grappling with the growing backlog of pending BPAI appeals. In view of the NFL practice, perhaps, a helpful tool in controlling growth of the backlog would be to provide an explanation after an unfavorable conference determination. Of course, some cases will proceed to the BPAI, presenting "close call" determinations, while still others may have no other prosecution options. Yet, surely there are clear PTO winners on the docket that would benefit from further prosecution. For these cases, how can the BPAI help clear their docket of these cases and, in the process, open the eyes of Applicants in such circumstances?

In many cases, especially those that have not been interviewed, the dispute between the Examiner and Applicant may just be a lack of appreciation of the other’s position. Often times, an Examiner will be thinking one thing, but the rejection does not adequately express the true rationale; to be sure, attorneys are just as capable of misunderstanding the Examiner’s true position. Yet, in an unfavorable Conference Decision, the Applicant receives only a form response having a single box checked noting, "Proceed to Board of Patent Appeals & Interferences."

Currently, "Proceed to the Board" may be viewed as a rubber stamp by the jaded among us, if not an outright challenge. In view of the appeal backlog, advancement to the Board should not be encouraged in this manner. As in the NFL, if the conferees determine the original decision to be correct, they should briefly explain why. In order to purge the appeal docket of clear PTO winners, an NFL style explanation, by a participating conferee may yield significant benefit.

For example, a conferring Examiner that is not in charge of the examination could provide a brief statement. The statement would ideally explain the upheld decision in a different light (i.e., not a cut-and-paste) than that provided by the responsible Examiner. Such an explanation could be limited in length, akin to the typical Advisory Action feedback. Interestingly, Under Secretary Kappos has proposed a new ombudsman position for art units, this type of feedback may be ideal for such a trouble shooter to facilitate.

Moreover, as the Office appears to be grappling with significant budgetary constraints, why not expand the Conference Request Program to allow for Applicant participation? The Office could require an additional fee for such participation. Such a conference interview mechanism is not unprecedented. The Central Reexamination Unit conducts all interviews with a three examiner panel in ex parte reexaminations.

In short, when receiving a favorable determination in a Pre-appeal Conference, the decision may be reversed for a completely different reason than that identified by the arguing practitioner. In such cases, the only feedback provided is a box that is checked indicating "Reopen Prosecution" or "Allowed." An explanation of the reversal is valuable guidance. Absent such an explanation, when the practitioner presents the same, "winning argument" in the next Request, and that argument is not accepted, the Office appears to be frustratingly inconsistent and a full appeal typically follows.

Likewise, when receiving an unfavorable determination, practitioners should be educated as to the rationale. This important, early feedback will enable a practitioner to better assess the impact of misconceptions and/or miscommunications on their appeal position, serving to dissuade some of the clear PTO winners from advancing to the Board. It is this continuous reinforcement that will serve to lessen the appeal backlog and instruct practitioners as to the realities of the game.

Scott A. McKeown is a partner with Oblon, Spivak, McClelland Maier & Neustadt and a team leader of the Reexamination and Reissue Practice Group. He is a founder and frequent contributor to www.patentspostgrant.com

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