USPTO News: New Appeals Rules Published

    By Donald Zuhn --

As we reported yesterday, the U.S Patent and Trademark Office published a notice in the Federal Register today setting forth amended rules of practice before the Board of Patent Appeals and Interferences (BPAI) in ex parte appeals (new appeals rules).  The lengthy 41-page notice (73 Fed. Reg. 32938) is broken up into six sections:

• Background (page 1 of the notice), which summarizes the Office's rationale and objectives in amending the appeals rules;

• Explanation of New Rules (pages 1-12), which, as the heading suggests, provides an explanation for each of the changes to the rules;

• Changes Made to Rules as Proposed (pages 12-18), which shows how the new appeals rules as published in today's notice differ from the appeals rules as proposed in the Office's July 2007 notice of proposed rulemaking (additions to the proposed rules are indicated by brackets and deletions are indicated by braces);

• Discussion of Comments (pages 18-33), which provides the Patent Office's answers to the 109 comments it received;

• Rulemaking Considerations (pages 33-36), in which the Office certifies that the new appeals rules satisfy rulemaking considerations of the Administrative Procedure Act, Regulatory Flexibility Act, Executive Orders 13132 and 12866, and Paperwork Reduction Act; and

• List of Subjects in 37 CFR Part 41 (pages 36-41), which sets forth the text of the amended portions of 37 C.F.R. Chapter 1, part 41.

According to the notice, the new appeals rules were needed to address a rising number of ex parte appeals.  In particular, the Board received 4,639 ex parte appeals in FY 2007 -- an increase of more than 1,000 appeals from FY 2006 -- and the Office expects the Board to receive more than 6,000 ex parte appeals in FY 2008.  Thus, the Office's goal was to amend the rules in such a way that the Board would be better able to handle the increasing number of ex parte appeals in a timely manner.

The notice indicates that "[a] major objective of the amended rules is to avoid unnecessary returns to examiners by the Appeals Center and the Board, along with the resulting delays in application and appeal pendency."  The Patent Office contends that the requirements set forth in the new appeals rules are more objective, and as a result, "both appellants and examiners will have a better understanding of what is required, thereby minimizing, if not eliminating, a need to hold appeal briefs defective."

In support of the new appeals rules, the Office argues that a number of the changes to the rules have been modeled after the Federal Circuit rules.  In addition, the Office notes that some of the changes were made because the old appeals rules "turned out in practice to be too subjective."  As one example, the notice states that the requirement for a summary of the invention has been replaced with an analysis of the claims and drawings (and means or step plus function analysis if relevant).

According to the notice, one other objective of the new appeals rules is improved appellant briefing.  The Office contends that the 30-page limit for appeal briefs will help accomplish this objective by promoting "concise and precise writing."  While the 30-page limit excludes the statement of the real party in interest, statement of related cases, table of contents, table of authorities, status of amendments, jurisdictional statement, signature block, and appendix, it will cover a number of sections required under the new appeals rules.  These sections include a "statement of facts," in which the appellant must set out the material facts relevant to the rejections on appeal, and an "argument" section, in which the appellant must explain why the examiner is believed to have erred as to each rejection to be reviewed.  In the latter section, the appellant 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."

One other change to the new rules is the promulgation of new Rule 41.56, which allows for the imposition of sanctions against an appellant who fails to comply with an applicable rule.

As we noted in our report yesterday, the new appeals rules will apply to any appeal briefs filed on or after December 10, 2008.

While the new appeals rules are unlikely to have the impact the new continuation and claims rules would have had if allowed to stand or the impact the IDS or alternative claiming rules packages will have when (or if) the Office publishes final rules, Cantor Fitzgerald Vice President David Boundy (at left) sent us a note earlier today to let us know that he nevertheless found the new appeals rules to be quite problematic.  In addition to taking issue with the manner in which the Office "answered" a number of comments, Mr. Boundy also had problems with the section on Rulemaking Considerations.

With respect to the Office's answers, Mr. Boundy argued that the Office improperly paraphrased comments and then provided answers to the paraphrased comment rather than the actual comment.  He also contended that the Office made up facts out of thin air (e.g., stating, without any factual basis, that it takes only "10 to 15 minutes" to generate a Table of Contents and Authorities for an appeal brief).  Mr. Boundy further chastised the Office for ignoring comments that pointed out that the Federal Circuit permits the skipping of page numbers in the appendix (thus reducing the time required to prepare the appendix), and instead, adhering to rules that require an appendix to begin at page 1 and be consecutively numbered to the end.  Foreseeing the problems such a rule will cause, he offered a prayer for "the appellant who needs to insert an additional page in the last few days before filing the brief."

Mr. Boundy also found fault with the Office's "attempts" to comply with the Paperwork Reduction Act and Executive Order 12866.  In particular, he noted that even though substantial issues had been raised under the 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."

Mr. Boundy concluded by stating that:

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.

Comments

[T]

Are there any indications (perhaps in the earlier filed comments) that anyone might file for an injunction?

[Donald Zuhn]

T:

I have not heard of anyone that has expressed an interest in taking on the Tafas/GSK role with respect to the new appeals rules. As I mentioned in my post, it may be that these rules are just not as controversial as the now enjoined continuation and claims rules, or the still-pending IDS and Markush rules packages.

Don