On Waiver

In the last post, this blog considered how the Trial and Appeal Department (TAD) of the Japan Patent Office (JPO) seems to conduct a de novo review of an Examiner’s rejection.  In contrast, the Patent Trial and Appeal Board (PTAB) of the US Patent and Trademark Office is more deferential and merely reviews an Examiner’s rejection de novo when contested .

Applicants familiar with Japanese practice should note another feature of appeals to the PTAB.  Specifically, “If an appellant fails to present arguments on a particular issue – or, more broadly, on a particular rejection – the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”  Ex parte Frye, No. 2009-006013, slip op. at 10 (PTAB Feb. 26, 2010).  More to the point, the PTAB will not review the Examiner’s rejection for any and all errors.  Instead, the PTAB will review the Examiner’s rejection only for errors argued by the applicant/appellant.

Thus, in Japan, it seems the TAD reviews the Examiner’s rejection on three separate grounds.  In particular, the TAD would consider (A) whether the Examiner made a proper rejection, and (B) whether the Applicant’s arguments overcome the rejection.

In contrast, the PTAB first considers whether the Applicant has pointed to an error in the Examiner’s rejection.  This consideration is more limited than (A) whether the Examiner made a proper rejection.  Specifically, this consideration is based only on the arguments presented by the Applicant.

The PTAB will also consider (B) whether the Applicant’s arguments overcome the rejection.

So, it is important for Applicants to focus on errors committed by Examiners.  If Modal can assist you in identifying reversible error, please contact us.

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