Biotech Customer Partnership August 3, 2004

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Biotech Customer PartnershipAugust 3, 2004
Jasemine C. Chambers, Ph.D., J.D. Director
Technology Center 1600 USPTO (571)
272-0500 jasemine.chambers_at_uspto.gov
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TC1600 Restriction Action Plan Update
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Review of TC1600 Restriction Practice Action Plan

• The action plan includes 5 initiatives
• Publish Examples Of Claim Sets
• Emphasis On Rejoinder Practice
• Examiner Training On Restriction Practice
• Enhanced Review Of Restriction Requirements
• Continuous Assessment

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Review of TC1600 Restriction Practice Action
Plan-progress

• Publish examples of claim sets
• Provide examples that do not present a serious
  burden on the office
• We are working on this and anticipate publication
  this FY

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Review of TC1600 Restriction Practice Action
Plan-progress

• Emphasis on rejoinder practice
• Provide a new rejoinder paragraph
• Remind applicants of their options on rejoinder
• This has been implemented

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Review of TC1600 Restriction Practice Action
Plan-progress

• 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
• We will train the examiners once the training
  materials, which are nearing completion, are
  finalized. After training is completed we will
  post the training materials on the USPTO web site.

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Review of TC1600 Restriction Practice Action
Plan-progress

• 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

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Review of TC1600 Restriction Practice Action
Plan-progress

• Continuous assessment
• Collect data from reviews and samplings
• Survey customers on impact of action plan
• We are currently collecting data from reviews

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Appeals Conferences
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Appeals Conferences

• An appeals 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 examiners answer (MPEP 1208).

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Appeals Conferences

• The participants in an appeals conference are
• The examiner
• The examiners 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.

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Appeals Conferences

• The Board of Patent Appeals and Interferences
  will return all cases that do not include the
  stamp and initials of the conferees to the
  technology center.

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Appeals Conference Outcomes

• A Notice of Allowance may be issued.
• An Examiners Answer may be issued.
• A new action may be issued.

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Appeals Conference Outcomes-data

• FY03
• Exmr. Answrs 426 (44.6)
• Re-openings 282 (29.5)
• Allowances 237 (24.8)
• FY04 (from a month on so ago)
• Exmr. Answrs 229 (60.1)
• Re-openings 84 (22.0)
• Allowances 61 (16.0)