Patent Baristas

On June 10, 2008, the USPTO published new Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals (73 Fed. Reg. 32937-32977, June 10, 2008; Final Rule). The new rules apply to all appeals in which an appeal brief is filed on or after December 10, 2008.

The Board of Patent Appeals and Interferences’ two main responsibilities include: (1) the review of ex parte appeals from adverse decisions of examiners in those situations where a written appeal is taken by a dissatisfied patent applicant and (2) the review of interferences to decide who is the first inventor whenever an applicant claims the same patentable invention which is already claimed by another applicant or patentee.

Since the Board is getting a flood of ex parte appeals — in FY2007, the Board received 4639 ex parte appeals, in FY 2008, the Board expects to receive more than 6000 ex parte appeals — they are looking for ways to get out of work. Interestingly, the new Appeal Rules were submitted to OMB just two weeks after the OMB passed the Continuation and Claim rules on the basis that applicants could always just appeal their case.

As you know, the PTO published a notice in the Federal Register inviting public comments on paperwork burdens associated with the Ex parte Appeal Rule.  The Information Collection Rule requires that the USPTO to develop and disseminate “an objectively supported estimate of burden.”

Since by law OMB has 60 days to either approve or disapprove the ICR, that deadline will run out very close to December 10, 2008, the effective date of the Appeal Rules.  So, I contacted the OMB to try to confirm whether or not things were a go.  In checking with OMB on the status, Ms. Abigail Tanner of OMB Communications reported that:

“The Paperwork Reduction Act gives OMB 60 days to review agency information collections.  While every effort is made to conclude reviews within this time-frame occasionally reviews take longer in order to gather and analyze the necessary data to make an informed decision.”

For now, it looks like we will need to be prepared for the new rules next week. In the meantime, if you have prepared an appeal brief for submission under the new rules and have found the preparation to be onerous, please relate your experiences to David Boundy, Vice President of Intellectual Property for Cantor Fitzgerald L.P.

According to the Notice, the primary changes in this rule are:

1. The requirements for an appeal brief include new sections for jurisdictional statement, table of contents, table of authorities, statement of facts, new format for arguments in the appeal brief and for claim support and drawing analysis section and means or step plus function analysis section in the appendix of the appeal brief, new section for table of contents in the evidence section of the appendix, new format in 14-point font, and 30-page limit for the grounds of rejection, statement of facts, and argument sections;
2. The requirements for a reply brief include new sections for table of contents, table of authorities, statement of additional facts, new format for arguments in the reply brief, new format in 14-point font, and 20-page limit for the statement of additional facts and argument section;
3. The requirements for a request for rehearing include new sections for table of contents, table of authorities, new format for arguments in the request for rehearing, new format in 14-point font, and 10-page limit for the argument section;
4. New grounds of rejection are no longer permitted in an examiner’s answer,
   the examiner’s response to a reply brief is eliminated;
5. Petitions to exceed the page limit for an appeal brief, reply brief or request for rehearing are made under Rule 41.3 which requires a $400 fee;
6. Petitions for an extension of time to file a reply brief, request for oral hearing, or request for rehearing are made under Rule 41.3 which requires a $400 fee, and
7. A list of technical terms or unusual words to be provided to the transcriber at the oral hearing.

In addition, the new rules require:

A ‘‘statement of facts’’ section where the appellant is required to set out the material facts relevant to the rejections on appeal. The ‘‘statement of facts’’ shall set out in an objective and non-argumentative manner the material facts relevant to the rejections on appeal. A fact shall be supported by a reference to a specific page number of a document in the Record and, where applicable, a specific line or paragraph, and drawing numerals. A general reference to a document as a whole or to large portions of a document does not comply with the requirements of this paragraph.

An ‘‘argument’’ section where an appellant shall explain why the examiner is believed to have erred as to each rejection to be reviewed. Any explanation must address all points made by the examiner with which the appellant disagrees and must identify where the argument was made in the first instance to the examiner or state that the argument has not previously been made to the examiner. The ‘‘argument’’ shall explain why the examiner erred as to each ground of rejection to be reviewed. Any explanation must address all points made by the examiner with which the appellant disagrees. Any finding made or conclusion reached by the examiner that is not challenged will be presumed to be correct.

For each argument an explanation must identify where the argument was made in the first instance to the examiner or state that the argument has not previously been made to the examiner. Each ground of rejection shall be separately argued under a separate heading. Unless a response is purely legal in nature, when responding to a point made in the examiner’s rejection, the appeal brief shall specifically identify the point made by the examiner and indicate where appellant previously responded to the point or state that appellant has not previously responded to the point. In identifying any point made by the examiner, the appellant shall refer to a page and, where appropriate, a line or paragraph, of a document in the Record.

The rules do not amend any of the rules relating to inter partes reexamination appeals. Except for citation of authorities, the rules do not amend any of the rules relating to contested cases.  Note that the rules also allow for sanctions which may be imposed against an appellant for failure to comply with an applicable rule.

See detailed comments provided by the American Intellectual Property Law Association (AIPLA) and by David Boundy of Cantor Fitzgerald L.P.

See also:
Unhappy with the Ex parte Appeal Rule? Speak Now.
As Approval Rate for U.S. Patents Drops, Applicant Shift to Appeals