The U.S. Patent and Trademark Office (USPTO) published some new rules that will improve (their word, not ours) the process of ex parte appeals before the USPTO’s Board of Patent Appeals and Interferences (BPAI). The rules are supposed to help to streamline the appeal process and lead to more timely Board decisions.  We’ll see.

The final rule requires examiners to put forward their reasons for the rejection earlier in the appeal process. Examiners will no longer provide a response to the reply brief, and new grounds of rejection are no longer permitted in examiners’ answers. In addition, supplemental examiners’ answers are no longer permitted in response to a reply brief. These changes will result in increased efficiency in the appeals process.

Under the new rules, requirements for a complete brief are clearly set forth, making it easier for applicants to ensure compliance. 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. Supposedly, these new requirements will result in some appeals being resolved before they reach the Board and will help foster timely decisions for the others.

The final rule reflects changes made after receiving public comments. For example, initial page limits set for the appeal brief and reply brief were increased by five pages to 30 and 20 pages, respectively. In addition, the evidence appendix no longer requires the submission of duplicative records beyond that required by the current rules.

David Boundy, of Cantor Fitzgerald LP, was appalled at the way the Response to Comments misparaphrases the comments, rather than fairly addressing the comment.  He was also appalled at the Board’s willingness to be loose with facts.  For example, several comments pointed out that preparing a Table of Authorities using MS Word 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 8 minutes.  Several comments pointed out that the Federal Circuit permits skipping page numbers in order to make it tractable to prepare the appendix.   The Board declined to adjust the page numbering rule.

Boundy went on to elaborate:

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.

The final rule will go into effect six months from today (December 10, 2008), and will apply to all appeals in which an appeal brief is filed on or after the effective date.

The full text of the new rules are available here.

Don’t forget to review the public comment letters on the Markush rule now up on the USPTO website.

  Print This Post Print This Post  

Comments are closed.