1

AIPLA Biotech Committee Meeting

Washington D.C., October 14, 2004

Jasemine C. Chambers, Ph.D., J.D.Director Technology Center 1600

USPTO(571) 272-0500

jasemine.chambers@uspto.gov

2

Topics Today

• Staffing, Pendency, and Filings

• Appeal Conferences

• Restriction Practice Action Plan

3

TC 1600 Staffing (9/28/04)

Groups Art Units Examiners PhD MS Law School

JD Primary PSA

1610 4 56 17 11 3 10 26 7

1620 5 67 32 19 0 7 33 4

1630 8 106 64 31 0 5 40 9

1640 7 111 66 14 6 6 35 12

1650 4 70 28 16 1 9 27 6

1660 1 8 0 2 2 0 3 0

TOTAL 29 418 207 93 12 37 164 38

4

TC 1600 Update

• Pendency

FY01 FY02 FY03 FY04  Total Pendency 26.1 25.5 27.8 ?Pendency to First action 12.8 13.2 15.8 ?

5

TC 1600 Update

• Filing Data

– FY04 appears down – FY03 -7.8% (38,613)– FY02 +13.8% (41,641)– FY01 +11.9%

6

TC 1600 Update

PCT Filings

• Constitute 15% of TC 1600 Workload• FY04 (as of 9/04)

– 7,400 Chapter I’s, 4,700 Chapter II’s

• FY03 – 6,000 Chapter I’s, 4,500 Chapter II’s

7

Appeal Conferences

An appeal conference is mandatory in all cases in which an acceptable appeal brief has been filed and the examiner in charge of the application is going to proceed with the appeal and write an examiner’s answer (MPEP 1208).

8

Appeal Conferences

The participants in an appeal conference are:– The examiner– The examiner’s SPE– A conferree

• The conferee is preferably another SPE, SPRE, QAS, or TCPS. However, the conferee may also be a primary examiner having sufficient experience and knowledge to be of assistance in the consideration of the merits of the issues on appeal.

9

Appeal Conferences

Outcomes:• A Notice of Allowance may be issued.

• An Examiner’s Answer may be issued.

• A new Office Action may be issued.

10

Appeal Conferences

Outcomes:• FY04 3rd Qtr

– Exmr. Answers 229 (60.1%)– Re-openings 84 (22.0%)– Allowances 61 (16.0%)

• FY03– Exmr. Answers 426 (44.6%)– Re-openings 282 (29.5%)– Allowances 237 (24.8%)

11

The action plan includes 5 initiatives:

1. Publish Examples Of Claim Sets

2. Emphasis On Rejoinder Practice

3. Examiner Training On Restriction Practice

4. Enhanced Review Of Restriction Requirements

5. Continuous Assessment

Restriction Practice Action Plan

12

Restriction Practice Action Plan

1. Publish Examples Of Claim Sets– Provide examples that do not present a serious burden

on the Office

– Provide both applicants and examiners with guidance

We are working on this and anticipate publication within the next several months.

13

Restriction Practice Action Plan

2. Emphasis On Rejoinder Practice– Provide a new Rejoinder paragraph

– Remind applicants of their options on Rejoinder

This has been implemented.

14

Restriction Practice Action Plan

3. Examiner Training On Restriction Practice– Emphasize proper restriction practices

• Claim groupings and support/formulation of restriction requirements

– Provide Art Unit/Workgroup specific examples– Publish materials

Training to examiners delivered at end of August. We will be posting the training materials on the USPTO web site.

15

Restriction Practice Action Plan

3. Examiner Training On Restriction Practice – cont. Includes:

Basic Restriction Requirements Linking Claims Markush Practice Rejoinder Opportunities

16

Restriction Practice Action Plan

4. Enhanced Review Of Restriction Requirements– Review Art Units with high number of restrictions

and indications of inconsistent requirements

– Includes reviewing restrictions in 2nd and subsequent actions

This has been implemented.

17

Restriction Practice Action Plan

5. Continuous Assessment – Collect data from reviews and samplings

– Survey customers on impact of action plan

We are currently collecting data from reviews.

18

Thank You

Jasemine C. Chambers, Ph.D., J.D.Director Technology Center 1600

USPTO(571) 272-0500

jasemine.chambers@uspto.gov