U.S. Patent Office Finalizes New Appeal Rules

The United States Patent and Trademark Office was busy last week with Federal Register Notices while most of the business world seemed to be slowing down for the Thanksgiving holiday in the United States. Look for more on the various USPTO Federal Register Notices for November 2011 in the coming days, but let’s focus our attention on what most will likely consider the “big-ticket” item to emanate from the USPTO last week — changes to the Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals, which were announced in the Federal Register on Tuesday, November 22, 2011.

First and foremost, it is worth saying that the PTO has finally withdrawn the previously published final rule set relative to ex parte appeals before the Board, which never went into effect.  This withdrawal of the failed 2008 changes to PTO appeals is effective November 22, 2011.  For more on these previously published rules and the procedural background leading up to these amendments to USPTO appellate practice see PTO Proposes Rescission of Stayed Ex Parte Appeals Rules. The remainder of these new rules will go into effect on January 23, 2012.

With these new rules the USPTO is amending the rules governing practice before the Board of Patent Appeals and Interferences in ex parte patent appeals. The new rules will: (1) Remove several of the briefing requirements for an appeal brief; (2) provide for the Board to take jurisdiction over the appeal earlier in the appeal process; (3) no longer require examiners to acknowledge receipt of reply briefs; (4) create specified procedures under which an appellant can seek review of an undesignated new ground of rejection in either an examiner’s answer or in a Board decision; (5) provide that the Board will presume that the appeal is taken from the rejection of all claims under rejection unless cancelled by an applicant’s amendment; and (6) clarify that for purposes of the examiner’s answer any rejection that relies upon evidence not relied upon in the Office action from which the appeal is taken shall be designated as a new ground of rejection.

These new appellate rules derive most directly from a notice of proposed rule making published in the Federal Register on November 15, 2010, which proposed the rescission of the aforementioned stayed final rules package and also requested comment on a variety of issues.  Public comment was requested on or before January 14, 2011, with all comments received by the deadline being considered.  The USPTO also specifically stated that it considered three additional comments received after January 14, 2011 in the deliberative process.

In the Federal Register Notice the Patent Office recounted several of the comments received.  The comments recounted by the Patent Office in the Background section largely related in one way or another to the perception by many in the patent community that the stayed, final appeal rules from 2008 were actually being enforced anyway.  In one instance, relating to the fact that a reply brief cannot raise any new argument or response, the USPTO said: “The indefinitely delayed 2008 regulations made this requirement clearer, but it has always been a requirement.”  This seems to characterize the PTO position relative to those claiming the 2008 rules have been in effect despite being stayed.

So why did the USPTO revise appellate rules? The Federal Register notice explains that one of the purposes of the new final rules is to ensure that the Board has adequate information to decide ex parte appeals on the merits, while at the same time not unduly burdening appellants or examiners with unnecessary briefing requirements. More specifically, the Patent Office explained that the goal is to lessen the overall burden on appellants and examiners to present an appeal to the Board. For example, statements of the status of claims, the status of amendments, and the grounds of rejection to be reviewed on appeal are no longer required in the appeal brief (final Bd.R. 41.37) or in the examiner’s answer. Similarly, the final rule no longer requires appellants to file an evidence appendix or a related proceedings appendix (final Bd.R. 41.37). Because much of this information is already available in the Image File Wrapper, it is unnecessary for appellants or examiners to provide this information to the Board.

By eliminating certain briefing requirements the PTO hopes to reduce the number of non-compliant appeal briefs and the number of non-compliant examiner’s answers. Non-compliant briefs and non-compliant examiner’s answers needlessly delay consideration of an appeal by the Board, which contributes to the long delays applicants on the appeals track face. Delays due to non-compliant briefs and answers are particularly unconscionable given the average pendency for an application that must proceed to appeal, which as of October 2011 stands at 81.8 months! See Patents Dashboard.  That is nearly 7 years from the filing of an application to resolution if action by the Board is required. When the non-compliance is minor or relates to information the Board could well obtain for itself right in the Office files it is downright nonsensical to interject delay by kicking non-compliant briefs and examiner answers. Hopefully these new rules will help at least a little bit for some applicants.

Another purpose of these amendments to appeals practice before the BPAI is to eliminate any gap in time from the end of briefing to the commencement of the Board’s jurisdiction. For example, under the new rules the Board takes jurisdiction upon the earlier of the filing of a reply brief or the expiration of the time in which to file a reply brief (final Bd.R. 41.35(a)). Examiners are no longer required to acknowledge receipt of the reply brief (Bd.R. 41.43 [removed]) in order to trigger jurisdiction of the Board. The gap in jurisdiction of the Board created needless problems for some applicants because the jurisdiction of the Board was not yet established, but the prosecution of the case was over. Those needing some kind of consideration fell through the gaps. In this regard the new rules streamline appellate practice and seem like a good step.

Frankly I don’t see why the jurisdiction of the Board should not be invoked earlier, at least in some limited supervisory way. Earlier jurisdiction by the Board was, in fact, was raised by one comment, which suggested that the Board take jurisdiction after the filing of the Notice of Appeal, which does seem logical. The USPTO, however, declined to adopt this suggestion because examiners can choose to reopen prosecution or allow applications after the filing of a notice of appeal. The Office explained that changing the Board’s jurisdiction to the point at which a notice of appeal is filed would foreclose the examiner’s options and could result in applicants unnecessarily going through a costly and lengthy appeal process. That is obviously not the case, and an alternative rule could have been fashioned that would have given the Board some jurisdiction to supervise while still allowing the examiner to reopen the case, thereby staying or even revoking Board jurisdiction.

The new final appeals rules are also intended to clarify and simplify petitions practice for cases on appeal. For example, except under limited circumstances, any information disclosure statement or petition filed while the Board possesses jurisdiction over the proceeding will be held in abeyance until the Board’s jurisdiction ends (final Bd.R. 41.35(d)).

Also, the USPTO will provide improved guidance in the Manual of Patent Examining Procedure (MPEP), relative to what constitutes a new ground of rejection in an examiner’s answer. The final rule explicitly sets forth the procedure under which an appellant can seek review of the Office’s failure to designate a new ground of rejection in either an examiner’s answer (final Bd.R. 41.40) or in a Board decision (final Bd.R. 41.50(c)).

If evidence, such as a new prior art reference, is applied or cited for the first time in an examiner’s answer, then final Bd.R. 41.39(a)(2) requires that the rejection be designated as a new ground of rejection. If the citation of a new prior art reference is necessary to support a rejection, it must be included in the statement of rejection, which would be considered to introduce a new ground of rejection. Even if the prior art reference is cited to support the rejection in a minor capacity, it should be positively included in the statement of rejection and be designated as a new ground of rejection. An examiner relying on new evidence is, however, not the only way to trigger a determination that the examiner’s answer contains a new ground of rejection. A position or rationale that changes the basic thrust of the rejection will give rise to a new ground of rejection. In this regard, the examiner need not use identical language in both the examiner’s answer and the Office action from which the appeal is taken to avoid triggering a new ground of rejection.

The Federal Register Notice cites In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976) relative to what constitutes a new ground of rejection, stating that the determination is a highly fact specific one. The Notice then provides examples of those things that will constitute a new ground of rejection, as well as what will not be considered a new ground of rejection. With respect to examples of a new ground of rejection the Patent Office provides the following examples:

1. Changing the statutory basis of rejection from § 102 to § 103.
2. Changing the statutory basis of rejection from § 103 to § 102, based on
a different teaching.
3. Citing new calculations in support of overlapping ranges.
4. Citing new structure in support of structural obviousness.
5. Pointing to a different portion of the claim to maintain a ‘‘new matter’’ rejection.

With respect to factual scenarios that do not constitute a new ground of restriction the Patent Office provides the following examples:

1. Citing a different portion of a reference to elaborate upon that which has been cited previously.
2. Changing the statutory basis of rejection from § 103 to § 102, but relying on the same teachings.
3. Relying on fewer than all references in support of a § 103 rejection, but relying on the same teachings.
4. Changing the order of references in the statement of rejection, but relying on the same teachings of those references.
5. Considering, in order to respond to applicant’s arguments, other portions of a reference submitted by the applicant.

Another purpose of this final rule is to reduce confusion as to which claims are on appeal. For example, under the final rule, the Board will presume that the appeal is taken from the rejection of all claims under rejection unless cancelled by an applicant’s amendment (final Bd.R. 41.31(c)). This rule simplifies practice for appellants who seek review of all claims under rejection, which according to the Patent Office is the majority of appellants, by obviating the need to enumerate the rejected claims that are being appealed. Under the previous practice, if an appellant incorrectly listed the claims on appeal, or was silent in the brief as to some of the claims under rejection, then the Office assumed that such claims were not being appealed.

The Federal Register Notice runs from page 72,270 through 72,299, in typical small type, triple column format. Upon cutting and pasting the Notice into Word, even with an excruciatingly small 9 point font the document was over 40 pages in length, with 36,884 words. Thus, this article, which is under 2,000 words, is only a brief summary. There is much left to digest, which means there is more left to write. I suspect that these appeal rules will be the subject of much more commentary here on IPWatchdog.com and elsewhere in the coming weeks, months and years. Stay tuned!



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Join the Discussion

4 comments so far.

  • [Avatar for AAA JJ]
    AAA JJ
    November 30, 2011 05:08 pm

    The Board should take jurisdiction as soon as the Appeal Brief is filed. If the Appeal Brief complies with all of the rules, the Board would then notify the examiner that the answer is due in 2 months (plus the end of the bi-week in which the notice was sent to the examiner, and up until noon or whatever time on “count Monday” the TC uses, i.e. the usual PTO shenanigans applied to time limits on the PTO).

    If the examiner wants to re-open, the examiner must provide reasons in writing. The applicant should be given the option to respond. The Board should decide whether prosecution should be re-opened.

    The usual excuse examiners provide for re-opening is that Applicant is presenting all new, never presented before arguments in the Appeal Brief. This is usually, not always, but usually (i.e. 90+%) a complete fabrication on the part of the examiner. Re-opening is almost always due to the examiner finally being called out on a terrible rejection, and then having to acknowledge that no easy counts are forthcoming from the RCE gravy train.

    This system would encourage Applicants and practitioners to present all of their arguments during prosecution (i.e. before appeal) and would discourage examiners from hiding their poor work product from review and frustrating Applicants by re-opening.

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    November 30, 2011 04:17 pm

    Thanks for distilling the highlights for us.

  • [Avatar for EG]
    November 30, 2011 09:23 am


    I see they finally fixed 41.37(c)(1)(iii) to omission regarding referring to paragraph number, in addition to page/line number. My brother Mark and I always thought it bizarre that the former appeal rules didn’t explicitly allow reference to paragraph number, given that most recent applications use paragraph numbering, not line numbering.

    The Summary of Claimed Subject Matter section has always been the most troublesome in my experience in terms of appeal briefs being rejected for non-compliance. Some of the non-compliance objections (for example, leaving out “Claimed” from the section heading) I’ve received were so exalting form over substance as to be ludicrous.

    Most of the sections previously required for the appeal brief (e.g., Status of Claims) that are being deleted were bureaucratic, but usually fairly harmless. The Evidence Appendix was a fairly obnoxious requirement (most of the time unnecessary), but you still had to put in a page saying: There is no other “evidence” submitted by Appellant during prosecution that is referred to in this Appeal Brief.

    I’m not sure the removal the former Grounds of Rejection section and essentially incorporating it into the Argument section (each Ground of Rejection now being a separate section with heading und the Argument section) is necessarily a good idea. I expect we’re going to have confusion (and non-compliance notices) over whether these new separate Ground of Rejection sections under the Arguments section meet the requirements of new Rule 41.37(c)(1)(iv). New Rule 41.37(c)(1)(v) relating to the Claims Appendix hopefully will also not cause confusion as to what claims are actually on appeal.

  • [Avatar for john white]
    john white
    November 29, 2011 09:56 am

    There is no “silver bullet” for appeals rules. Inasmuch as you have many attorneys filing not very often, unlike usual appelate practice where a few attorneys file often and, likewise many examiner’s handling appeals once every few years, or even more rarely, mistakes are made regardless of the rules. I think, oddly, it would help if the PTO provided a “fill in the blank” appeal template for both attorneys and examiners. With examples, etc, for those unfamiliar to follow. At least everything would be in the right place, properly labelled and stated.

    All of the PTO procedures beyond usual prosecution (throw in reisue too) are fraught with mistakes. Attorneys simply do not handle enough of them under whatever the current rule regime is to get a handle on it. This would include petitions, reexam, etc. I think it ought to be more recipe oriented with acceptable examples posted by those who are doing the gate keeping function. It would be in their interest to post easy to follow examples so that more of what they see would be acceptable. Also, a list of common mistakes would be helpful. No one wants to receive 3-4 go arounds with a Rule 47 petition etc for non-subtantive error. You feel like an idiot and your client probably begins to conclude the same.