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USPTO proposes new BPAI rules to cope with upcoming increase in appeals

July 31, 2007
Post by Blog Staff

In a Federal Register notice yesterday, the USPTO promulgated revised rules for practice before the Board of Patent Appeals and Interferences. The USPTO will accept comments on the proposed rules until September 28, 2007 via email, fax, or postal mail. Many of the proposed rules appear designed to advance the USPTO's current trend toward finding waiver of arguments or evidence not presented at the first opportunity, as well as requiring many of the same statements currently required by the accelerated examination program (but proposed in the most recent version of the Patent Reform Act of 2007). They also appear calculated to deal with the anticipated increase in ex parte appeals once the rumored limits on continuation applications go into effect.

More detail and additional thoughts on the proposed rules after the jump.

While some of the rule changes are minor (such as the requirement that notices of appeal be signed), some are more onerous. For example, after an appeal brief is filed, an examiner may only consider entering two types of amendments (and is not required to enter any): amendments cancelling claims and amendments rewriting dependent claims into independent form.

Another potentially problematic rule is that evidence not previously before the examiner may only be submitted after a notice of appeal is filed if:

(1) if the examiner determines that the evidence overcomes some or all rejections under appeal and (2) appellant shows good cause why the evidence was not earlier presented.

Interestingly, however, later on the same page of the Federal Register (41473), the notice states that the new evidence may only be admitted if it overcomes all rejections being appealed, not "some or all" rejections:

Even where good cause is shown, if the evidence does not overcome all rejections, the evidence would not be admitted. Alternatively, the examiner could determine that the evidence does not overcome all the rejections and on that basis alone could refuse to admit the evidence.

This corresponds with some of the provisions in the originally-proposed rules to limit continuation applications.

Other rules are simply attempts to reduce the number of cases being heard by the Board, presumably because the USPTO expects that after the new continuation rules take effect more notices of appeal will be filed instead of continuations. For example, if an appeal brief is not timely filed, the appeal would automatically considered terminated, even if the USPTO or Board does not notify the applicant of this fact. This could conceivably include situations where the brief does not comply with all the new requirements for appeal briefs (more on that below). Also, the new rules provide that jurisdiction over the appeal is not transferred to the Board until entry of a docket notice by the Board. This is simply to transfer more workload from the Board to examiners:

By delaying the transfer of jurisdiction until the appeal is fully briefed and the position of the appellant is fully presented for consideration by the examiner and the Office reviewers (appeal conferees), the possibility exists that the examiner will find some or all of the appealed claims patentable without the necessity of proceeding with the appeal and invoking the jurisdiction of the Board.

In addition, there are more formal requirements for the appeal brief. The new section headings are:

(1) Statement of the real party in interest, (2) statement of related cases, (3) jurisdictional statement, (4) table of contents, (5) table of authorities, (6) status of claims, (7) status of amendments, (8) rejections to be reviewed, (9) statement of facts, (10) argument, and (11) an appendix containing (a) claims section, (b) claim support section, (c) drawing analysis section, (d) means or step plus function analysis section, (e) evidence section, and (f) related cases section.

Notable among these are the "claim support section" and "drawing analysis section," which require the applicant to point out the support for each claim element in the original specification specifically by page and line, as well as referencing the relevant figures. Also, the "statement of facts" will look much like a statement of facts in the summary judgment context of litigation, with numbered statements with specific support cited to the record. This is another mechanism to prevent cases from having to be actually decided by the board, as stated in the notice (emphasis added):

[T]he statement of facts is designed to require an appellant to set out the facts which the appellant considers material for resolution of the appeal, thereby assisting the examiner initially and, if necessary, the Board thereafter to focus on the dispositive portions of the record.

Also, applicants must identify which arguments were previously made to the examiner, and where in the prosecution history those arguments were made, or if it was not made, that the argument was new. This is another opportunity to prevent the Board from actually having to hear the appeal (emphasis added):

The presentation of a concise, but comprehensive, argument in response to the final rejection will efficiently frame any dispute between the appellant and the examiner not only for the benefit of the Board but also for consideration by the examiner and Office reviewers (appeal conferees) and provide the best opportunity for resolution of the dispute without the necessity of proceeding with the appeal.

Based on these proposed rules, it seems clear that the USPTO is bracing for a flood of appeals after the new continuation rules are implemented this fall, and that they are attempting to preemptively stem the tide of cases that will need to be decided by the Board of Patent Appeals and Interferences. Time will tell whether these proposed rules end up modified before implementation.

Several blogs have also weighed in on the rules, including the Patent Prospector, Patent Baristas, and Patently-O.


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