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APPEALS

APPEALS . . . DEFINITION OF TECHNOLOGICAL AREAS

Department of Commerce, Patent and Trademark Office, Arlington, Virginia and Patent Office Professional Association, Case No. 00 FSIP 55, June 12, 2001 (Release No. 440).

The UNION proposed that the Panel impose the Factfinder's recommendation, which follows:

E.2.: (i) A committee will be established to hear appeals if an examiner disagrees with the definition of his/her technological area or a particular company's designation in a technological area. The appeals committee will gather information necessary to apply the standards set forth in subsections (ii) to (iv) below. Past practice within the art unit will not be precedential since any one examiner may not be concerned with this issue. The appeals committed will issue a written decision which shall be precedential to the extent circumstances have not changed;

(ii) The fact that a company has fewer than twelve (12) patents issued in a technological area in the most recent eight (8) years, is prima facie evidence that such company is not within that technological area;

(iii) If an examiner has not acted on any application from a company in the past two years, this will be considered prima facie evidence that the company is not in the examiner's technological area;

(iv) Prima facie evidence of an examiner's technological area will be the cases that the examiner has acted on in the past year;

(v) When making an allegation that a particular company is in an examiner's technological area, management will cite at least one patent application that the examiner has acted upon in the last year or one patent application that is docketed to the examiner that will have a direct and predictable impact on the company;

(vi) In applying the standards set forth in (ii) to (v) above, it is understood that other relevant data may be applied in any individual case if the evi-dence shows that it is warranted.

E.3.: Management shall provide each examiner with a list of six digit Standard Industry Classification (SIC) codes for the examiners assigned technological area or with a particular company's designation in a technological area. Management shall yearly identify all companies that fall within the identified SIC codes within each technological area for companies listed on the New York Stock Exchange, the American Stock Exchange or the NASDAQ Market.

E.4.: (i) A committee will be established to hear appeals if an examiner disagrees with the designated SIC codes for the examiner's assigned technological area or with a particular company's designation in a technological area. The appeals committee will gather the information necessary to apply the standards set forth in subsection (ii) and (iii) below. Past practice in the art unit will not be precedential since any one examiner may not be concerned with this issue. The appeals committee shall issue a written decision which shall be precedential to the extent circumstances have not changed;

(ii) The fact that the company's total patents classified in a particular class are less than [one percent] of the total patent portfolio and less than [one percent] of the total patents classified in that class will be prima facie evidence that such company is not within the technological area defined by/encompassed by that class;

(iii) A company shall be deemed to be within a technological area if 10% or more of the company's revenue is generated by activities within the technological area. Revenue of less than 10% will be prima facie evidence that such company is not within the technological area;

(iv) In applying the classifications as set forth in (ii) and (iii) above, it is understood that the SIC codes are being used as a guide, and that other relevant data can be taken into consideration if the evidence shows that it is warranted.

The AGENCY proposed that the Panel reject the Factfinder's recommendation on § E.

The PANEL ordered the parties to adopt the following:

In accordance with § E.1., the Office's written decision will occur only after it has been presented with recommendations from a joint labor-management committee regarding any disagreement between the examiner and the Office concerning the definition of his/her technological area or a particular company's designation in a technological area or a particular company's designation in a technological area. The joint labor-management committee will consist of no more than two representatives from each side. The committee will gather the information necessary to apply the standards set forth in subsections (ii) to (v) below. Past practice within the art unit will not be precedential since any one examiner may not be concerned with this issue. If the committee reaches a consensus regarding its recommendation, the recommendation will promptly be issued in writing to the Office. In either case, the Office will then promptly issue its written decision to the examiner, in accordance with E.1. above;

(ii) When the committee considers its recommendations, the fact that a company has fewer than twelve (12) patents issued in a technological area in the most recent eight (8) years, is prima facie evidence that such company is not within that technological area;

(iii) If an examiner has not acted on any application from a company in the past two years, this will be considered prima facie evidence that the company is not in the examiner's technological area;

(iv) Prima facie evidence of an examiner's technological area will be the cases that the examiner has acted on in the past year;

(v) When making an allegation that a particular company is in an examiner's technological area, management committee members will cite at least one patent application that the examiner has acted upon in the last year or one patent application that is docketed to the examiner that will have a direct and predictable impact on the company;

(vi) In applying the standards set forth in (ii) to (v) above, it is understood that other relevant data may be considered by the committee, including SIC and/or NAICS Codes, and applied in any individual case if the evidence shows that it is warranted.