Patent Law

Compact Appeal

By Gary Odom and Jordan Kuhn

Facing an onslaught of appeals because of abysmal examination, the USPTO has new rules to streamline the appeal process. Appeals in a single round. Gone: examiner response to an appeal brief, and the ability to raise new grounds of rejection in examiners' answers. From the announcement:

Briefing requirements that were not necessary for the appeal - such as the "summary of the claimed subject matter" - are no longer required. The facts and arguments required in the brief are focused on distilling the issues of the dispute and establishing where the examiner erred in the rejection. Finally, page limit requirements ensure concise and clear arguments.

In the Federal Register, self-admission that examination quality is circling the rim of the bowl:

Presently, the Board is experiencing a rapid increase in ex parte appeals. In FY 2007, the Board received 4639 ex parte appeals. The number of appeals received in FY 2007 exceeded the appeals received in FY 2006 by more than 1000 appeals. In FY 2008, the Board expects to receive more than 6000 ex parte appeals.

More on the new rules:

The amended rules make clear that the Board is not a tribunal for de novo examination. The rules establish procedures to determine whether an appellant has established that the examiner erred. For example, the rules require the appellant's argument shall explain why the examiner is believed to have erred as to each rejection to be reviewed. Arguments not made are waived.

Some former rules have turned out in practice to be too subjective. For example, the former rules require a summary of the invention. Appellants, as well as examiners, have given different interpretations to the requirement for a summary of the invention. The amended rules replace the requirement for a summary of the invention with a claims and drawing analysis and a means or step plus function analysis.

The amended rules are directed to improving appellant briefing. A 30-page limit for the brief will promote concise and precise writing... The amended rules also require a ''statement of facts'' section where the appellant is required to set out the material facts relevant to the rejections on appeal.

Appeals become focused on pointing out examination error. The thrust is to make clear to SPEs spurious rejections, and cut the PBAI appeals pile.

The amended rules require 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. By having a clear focus on the dispute and making clear what arguments have been and have not been presented to the examiner, the USPTO reviewers as well as the examiner can make a well-informed decision on (1) whether to proceed with the appeal or (2) whether to withdraw the rejection.

Effective date: December 10, 2008.

Commentary from David E. Boundy of Cantor Fitzgerald:

The Response to Comments repeatedly misparaphrases the comments, and then replies to the misparaphrase, rather than fairly addressing the comment.

The Board seems willing to make up facts out of thin air. Several comments pointed out that preparing a Table of Authorities using MS Word "Table of Authorities" tool takes hours. The Board says, with no identified factual basis, that it takes "10 to 15 minutes" to generate Table of Contents and Authorities with no identification of what tool generates a Table of Authorities in that amount of time.

Several comments pointed out that the Federal Circuit permits skipping page numbers in the Appendix in order to make it tractable to prepare the appendix and refer to the page numbers in the body of the brief. The Board declined to adjust the page numbering rule, and instead insists that page numbers begin at 1 and continue consecutively through the appendix. God help the appellant who needs to insert an additional page in the last few days before filing the brief.

Several people raised substantial issues under Paperwork Reduction Act and Executive order 12866. The PTO simply brushed the issues aside with no comment, except to baldly assert that the Appeal Rule imposes zero cost of compliance and zero sacrifice of rights, with no identified basis. The PTO's certification to Office of Management and Budget of "not significant" allowed the PTO to evade review under Executive Order 12866. Even on the best possible view of the facts presented in the Final Rule notice, the PTO concedes that the burden of this rule is at least above the threshold for "significant," and the PTO failed to reply to comments showing that it is likely "economically significant," the highest category of burden. This failure to reply to public comments violates both the spirit of the Executive Order and the Administrative Procedure Act.

The new Appeal Rule 41.39(b) provides "No new ground of rejection. An examiner's answer shall not include a new ground of rejection." First of all, this is illegal - it is not a "logical outgrowth" of the rule as published in the Notice of Proposed Rule Making (recall this is one of the grounds on which Judge Cacheris preliminarily enjoined the PTO's Continuations and Claims rules in October). Second, this was the rule during the period 1998-2004. However, the Board refused to enforce the rule during the time it was in effect, Ex parte Brissette, 2002 WL 226585 (BPAI May 19, 2000); Ex parte Deacon, 2002 WL 226993 (BPAI 2000), so as a practical matter, examiners were free to throw in new grounds of rejection at any time, and applicants were constrained in their ability to reply.

Since 2001, the PTO has regarded rules of procedure as expendable, to be ignored when constraining PTO action but enforceable when applicable to constrain applicants, and Due Process is something for dewey-eyed foreigners. This Notice of Final Rulemaking appears to continue the trend.

Full post as published by The Patent Prospector on June 10, 2008 (boomark / email).