US Patent Office Seeks to Modify Appeals Rules… Again

By Gene Quinn
December 22, 2009

The United States Patent and Trademark Office earlier today announced in the Federal Register that they will once again attempt to modify the rules of practice and procedure in ex parte appeals before the Board of Patent Appeals and Interferences (BPAI). Many will undoubtedly remember that just over one year ago, on December 9, 2008, the Office of Management and Budget (OMB) ordered a delay in the implementation of the previously Final Appeals Rules, which were scheduled to go into effect on December 10, 2008.  It seems that the working document moving forward will be those estopped Final Rules, which apparently are no longer quite so final and now open for debate.  With that in mind, and to keep things as clear as possible, allow me to refer to the June 10, 2008 rules that were stopped by OMB to be “the previously Final Appeals Rule.”   The Office will consider the Appeals Rules anew and seeks comment both on potential modifications to the previously Final Appeals Rules and issues of law and policy raised by those rules.

Originally, with respect to the previously Final Appeals Rules, the USPTO followed a rather unorthodox and bizarre procedure in promulgating those Appeals Rules. In short, the Patent Office had not been truthful with the OMB about the financial costs that would fall on the industry to comply with the rules. On top of that, an agency normally obtains Paperwork Reduction Act clearance at the time that a new rule is published as a Notice of Proposed Rulemaking. The agency then submits the rule to OMB shortly thereafter for review. However, in this case, the USPTO certified to OMB that the total economic burden was essentially zero (which everyone knew was simply untrue) and made no request for Paperwork Approval until the day before the publication of the Notice of Final Rule. As a result, even though the Appeals Rules were published as a final rule, the Patent Office could not enforce it because they failed to timely seek OMB approval under the Paperwork Reduction Act. With the Patent Office under new management, we can all hope for a better procedure and maybe even fair rules!

To facilitate discussions the Patent Office will conduct a roundtable event on January 20, 2010 to explore the issues.  The USPTO is further requesting comments from interested members of the public on potential modifications to the Appeals Rules that were announced as Final Rules on June 10, 2008.   The roundtable discussions will begin at 9:30 a.m. and ending at 12:30 p.m. This event has been scheduled during the comment period so that participants will have time to familiarize themselves with modifications to the final rule that are under consideration in advance of the roundtable so as to provide meaningful input to the USPTO and so that those submitting written comments will have the benefit of the discussion from the roundtable and adequate time after the roundtable to prepare and submit written comments.

Changes being considered to the previously Final Appeals Rule include: (1) Deleting portions of the rule that require the filing of a petition to the Chief Administrative Patent Judge seeking extensions of time to file certain papers after an appeal brief is filed in an ex parte appeal or seeking to exceed a page limit; (2) deleting portions of the rule that require the filing of a jurisdictional statement, table of contents, table of authorities, and statement of facts in appeal briefs, a table of contents, table of authorities, and statement of additional facts in reply briefs, and a table of contents and table of authorities in requests for rehearing filed in ex parte appeals; (3) deleting portions of the rule that require an appellant to specifically identify which arguments were previously presented to the Examiner and which arguments are new; (4) deleting portions of the rule that require specific formatting requirements and page limits for appeal briefs, reply briefs, and requests for rehearing; and (5) deleting portions of the rule that require appellants to provide a list of technical terms and other unusual words for an oral hearing. The Office is also considering a revision to the final rule so that an examiner may continue to enter a new ground of rejection in an examiner’s answer (as is allowed under the current rules). The Office is also considering not allowing an examiner to file a supplemental examiner’s answer in response to a reply brief. For reasons of administrative efficiency, the Office is also considering revising the final rule to make clear that the Chief Administrative Patent Judge, rather than the Board, may remand an application to the examiner, which would be in keeping with the trend to encourage compacted appeals and prevent needless remands when the Board could resolve the case.

The roundtable session will also include a presentation by the USPTO of the challenges, including an increased appeal workload, facing the Board of Patents Appeals and Interferences. It will discuss the results it hopes to achieve from any potential modifications to the previously Final Appeals Rules and will solicit input from the roundtable participants on how, beyond the procedural changes that are under consideration, to meet these challenges.

The number of participants in the roundtable will be limited to ensure that all who are speaking will have a meaningful chance to do so. The roundtable is open to the public, but participation in the roundtable is by request, as the number of participants in the roundtable is limited.  The deadline for receipt of requests to participate in the roundtable is 5 p.m. Eastern Standard Time on January 8, 2010.  The USPTO plans to invite a number of participants from patent user, practitioner, industry, and independent inventor organizations, academia, industry, and government. The USPTO also plans to have a few ‘‘at-large’’ participants based upon requests received in response to this notice to ensure that the USPTO is receiving a balanced array of views on the potential modifications to the final rule.  The roundtable event will also be made available to the public via Web cast.

Any member of the public may submit written comments on issues raised at the roundtable or on potential modifications to the final rule under consideration by the USPTO.  The deadline for receipt of written comments on potential modifications to the final rule is 5 p.m. Eastern Standard Time on February 12, 2010. Additionally, the USPTO will accept written comments on other matters discussed at the roundtable until 5 p.m. Eastern Standard Time on February 25, 2010.

In stark contrast to the Dudas Administration, who even after the OMB ordered a delay in implementation of the rules encouraged applicants and their representatives to feel free to use the estopped rules, the Kappos Administration recognizes that these rules are not in effect and appeals “must comply with the current rules in effect” while the Office considers modifications to Appeals practice anew.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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Discuss this

There are currently 2 Comments comments.

  1. Just visiting December 23, 2009 3:25 pm

    If the BPAI wants to cut pendency, then there are some things they can do.

    Stop re-examining the application!!! The BPAI is supposed to decide whether applicants established that the Examiner has committed reversible error — not whether the APJ can come up with a better rejection based upon the APJ’s factual findings, own claim constructions, and own legal analysis (which almost always is an obviousness analysis). Too many decisions by the BPAI are less “Decision” and more third (or fourth or fifth) Office Action.

    This is what happens when the BPAI is most made up of former examiners — you get people thinking they can do better. As such, instead of focusing on the issues presented, they waste time by re-examining the application. Also, by giving examiners a crutch to lean on (i.e., by giving a free pass to bad examination) they just reinforce that bad analysis and incomplete findings of fact will be upheld by the BPAI.

    There are a couple different types of cases you can take to the BPAI. In my experience, the most common case to take to the BPAI is those in which the Examiner has royally scrwed the pooch. Anybody practicing the last decade has noticed that the quality of rejections is awful. As a result, the number of Appeals has skyrocketed.

    Also, commit the USPTO to stop f’ing with the continuation/RCE rules. The number of Appeals being filed jumped when the rule packages that restricted continuations/RCE was about to be passed. When you are only given a single bite at the RCE apple, people started realizing that Appealing bad final rejection was better than filing an RCE.

    Regardless of what changes, the fact of the matter is that if you were to file a Notice of Appeal on January 1, 2010, odds are that you’ll get a decision sometime late 2012 (perhaps even into 2013). Of that delay, Applicants will have contributed 4 months worth (2 months after filing the Notice of Appeal and 2 months after the Examiner’s Answer to file the Reply Brief).

    Counter-intuitive to what it may seem, the cure for the BPAI’s backlog doesn’t rest with the BPAI. Instead, it rests with the Examining Corp providing better examination. A bad rejection is far, far more likely to be appealed than a good rejection.