Question and Answer with Teddy Gron

Oblon, Spivak is fortunate and honored to have a distinguished former Administrative Patent Judge (APJ) as integral part of Oblon, Spivak’s Board of Patent Appeals and Interferences Practice Group.

Teddy Gron brings over 35 years of USPTO experience to Oblon, Spivak, including most recently serving as an APJ at the Board for 14 years, and prior as an Associate Solicitor in the Office of the Solicitor for 6 years, arguing more than 50 cases before the Federal Circuit.

We are fortunate to provide Teddy's insights on practices in front of the Board of Appeals and Interferences, and to have his specific insights to the following questions.

Q1: What are the important steps to take during patent prosecution that can help your case on an appeal?

Teddy: The most important step in improving prosecution is to read all the evidence carefully. The specification and the prior art of record are not always adequately considered before appeal. With full knowledge of the respective disclosures, better claims can be drafted and better arguments can be presented supported by evidence of record.
 

Q2: From your time on the Board, what are the biggest mistakes you see attorneys make in their Appeal Briefs?

Teddy: The biggest mistakes in Appeal Briefs relate to claim interpretation. Attorneys do not understand the full scope and content of the invention claimed, have not read and/or completely understood the teaching in the supporting Specification, and have not read and/or completely understood the applied prior art teaching. This is no joke!
 

Q3: How important in your view is an Oral Hearing in the outcome of the Appeal?

Teddy: An attorney may lose the appeal at Oral Hearing if he/she is not adequately prepared to answer all questions relating to the pertinent technology and the applicable law. Oral argument may be useful to further explain a position and pinpoint the facts in support of a position, particularly that may not have been adequately or clearly briefed. Well written briefs are more important than attempts to salvage one’s case at Oral Hearing. Although oral argument may not likely convince the Board to reverse, a close case can easily be lost by poor answers to unanticipated questions.
 

Q4: What is the biggest mistake you see attorneys make in their oral argument?

Teddy: The biggest mistake at oral argument is a lack of preparation, most especially unfamiliarity with the evidence of record (the specification, the prior art, and all the claims) and the applicable law. Next, attorneys often attempt to avoid rather than attack the PTO’s best evidence and strongest arguments in support of unpatentability.
 

Q5: The Board had recently proposed a new format for an Appeal Brief. What is your take on whether that new format will ultimately be implemented and how it will affect the Appeals process.

Teddy: The new format proposed in December 2008 will not be implemented as presented because it requires the appellant to fully and fairly present the cases both for and against patentability. The PTO has always had the initial burden to explain and establish the factual basis for its rejections. Always remember that applicants are entitled to a patent based on objective enablement unless the contrary is shown. Nevertheless, attorneys should be mindful that a Board of inexperienced APJs needs all the help it can get to make the right decisions. In the long run, the applicant benefits from the correct result and a valid patent.

Q6: Do you see any other trends on the horizon in the Appeals process?

Teddy: Until the PTO realizes that backlogs should not be reduced by increasing the number of inexperienced APJs and setting unjustifiable production requirements for their work, the quality of decisions by the Board will not improve. Experience takes time. The best decisions are well supported by evidence and law. It takes time to fully consider both and author a clear and correct opinion.
 

Q7: Very few cases are appealed from the Board to the Federal Circuit. Do you see that trend changing in the future? And, if so, how should applicants prepare for such an appeal?

Teddy: Few decisions of the Board are appealed to the Federal Circuit. However, the Court would argue that those few are a few too many. An appeal to the Federal Circuit is expensive. It is much less expensive to file a continuation, amend the claims, present new evidence, and make new arguments in the PTO. Moreover, few attorneys have the expertise and experience to take an appeal to the Federal Circuit and convince the Court that the Board erred in a conclusion of law or clearly erred in a finding of fact. There will be more appeals under 35 U.S.C. § 141 because more important and financially lucrative inventions are in the air. Attorneys with substantial appellate experience are few and far between.