On November 22, 2011, the USPTO issued its final changes to the Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals. The new rules will apply to all cases in which a Notice of Appeal is filed on or after January 23, 2012. Here, I review some of the key changes embodied in the new rules.
As summarized in the Federal Register Notice, the final rules:
- Remove several of the requirements for an Appeal Brief
- Provide for the Board to take jurisdiction earlier in the appeal process
- No longer require Examiners to acknowledge receipt of Reply Briefs
- Create specific procedures for review of undesignated new grounds of rejection in an Examiner’s Answer or Board decision
- Provide that the Board will presume that the appeal is taken from the rejection of all rejected claims unless claims are cancelled
- 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
- The USPTO also formally withdraws its previously published final ex parte appeal rules that never went into effect.
Jurisdiction over Appeal (37 CFR § 41.35)
The new rules provide that the Board will take jurisdiction over an appeal automatically, upon the filing of a Reply Brief (or expiration of the time period for doing so).
(That the Board does not take jurisdiction upon the filing of a Notice of Appeal underscores my view that the USPTO misapplies the Patent Term Adjustment statute with regard to the exclusion of “time consumed by appellate review by the Board” from its “three-year delay” calculations under 35 USC § 154(b)(1)(B). The USPTO calculates this excluded period as running from the day a Notice of Appeal is filed until the day the Board (or a court) issues a decision in the appeal, or the Examiner issues a new Office Action or Notice of Allowance, even if the Board never takes jurisdiction. In this Federal Register Notice, the USPTO expressly rejects a suggestion that the Board take jurisdiction upon the filing of a Notice of Appeal because “[E]xaminers may choose to reopen prosecution or allow applications after the filing of a [N]otice of [A]ppeal,” underscoring the fact that “appellate review by the Board” does not commence that early. As I wrote previously, I think this issue is ripe for judicial review.)
“Evidence” (37 CFR § 41.30)
The new rules create a new definition for “Evidence”
Evidence means something (including testimony, documents and tangible objects) that tends to prove or disprove the existence of an alleged fact, except that for the purpose of this subpart Evidence does not include dictionaries, which may be cited before the Board.
The exclusion of “dictionaries” is intended to permit appellants to cite dictionary definitions on appeal without being restricted by the requirements for submitting new evidence on appeal. Likewise, this exclusion permits Examiners and the Board to cite new dictionary definitions without entering a new ground of rejection.
“Record” (37 CFR § 41.30)
The new rules create a new definition for “Record”
Record means the items listed in the content listing of the Image File Wrapper of the official file of the application or reexamination proceeding on appeal or the official file of the Office if other than the Image File Wrapper, excluding amendments, Evidence, and other documents that were not entered. In the case of an issued patent being reissued or reexamined, the Record further includes the Record of the patent being reissued or reexamined.
As stated in the commentary in the Federal Register Notice, the Record does not include the published application.
Citation of Authority (37 CFR § 41.12)
The new rules specify a preference (but not a requirement) for citations to West reporters and eliminate the requirement for parallel citations to the United States Patent Quarterly (USPQ). The new rules emphasize the requirement for pinpoint cites “whenever a specific holding or portion of an authority is invoked.” If the cited authority is not issued by the USPTO or published in a West reporter, a copy should be provided.
Simplified Appeal Brief Requirements (37 CFR § 41.37(c))
The new rules amend 37 CFR § 41.37(c) to require only the following five items in an Appeal Brief:
(i) Real party in interest. New default rule: If an appeal brief does not contain a statement of the real party in interest, the USPTO may assume that the named inventor or inventors are the real party in interest.
(ii) Related appeals and interferences. New default rule: If an appeal brief does not contain a statement of related cases, the USPTO may assume that there are no such related cases.
(iii) Summary of claimed subject matter. New requirement: A concise explanation of the claimed subject matter is to be provided for each rejected independent claim, with reference to the specification, which can be by page and line number or by paragraph number. A concise explanation also is required for any separately argued dependent claims that include means-plus-function or step-plus-function language, and is recommended (but not required) for any separately argued dependent claims. The new rules expressly caution that reference to the patent application publication does not satisfy this requirement (because the published application is not part of the Record).
(iv) Argument. New requirement: Each ground of rejection must be argued under a separate heading that identifies the ground of rejection (such as “by claim number, statutory basis, and applied reference, if any”). Arguments for separate consideration of specific claims also should be provided under separate headings. Except under limited circumstances, any arguments or authorities not included in the Appeal Brief will be refused consideration.
(v) Claims appendix.
The new rules provide specific guidance on the “related appeals and interferences” that must be identified under 37 CFR 41.37(c)(ii). In particular, only those prior and pending appeals, interferences or judicial proceedings which satisfy all of the following conditions must be cited:
- Involve an application or patent owned by the appellant or assignee
- Are known to appellant, the appellant’s legal representative, or assignee, and
- May be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal.
The new rules no longer require the appellant to submit copies of decisions from any related cases, but the commentary in the Federal Register Notice states that the USPTO “appreciates receiving copies of decisions or relevant papers from related proceedings.”
The new rules no longer require an Evidence Appendix, but the commentary in the Federal Register Notice states that the USPTO “strongly encourages and appreciates receiving copies of evidence relied upon,” such as declarations and evidence of secondary considerations of non-obviousness.
These comments serve as a reminder that providing copies of relevant documents with the Appeal Brief usually will work to an appellant’s advantage, to make it easy for the Board to review the authority and evidence that the appellant cites in its favor.
Examiner’s Answer (37 CFR § 41.39)
The new rules simplify the requirements for the Examiner’s Answer, providing that an Examiner’s Answer is deemed to incorporate all of the grounds of rejections set forth in the Office Action from which the appeal is taken (as modified by any Advisory Action and pre-appeal brief conference decision).
The new rules still provide that an Examiner’s Answer may include a new ground of rejection, but clarify that “any rejection that relies upon any Evidence not relied upon in the Office [A]ction . . . shall be designated . . . as a new ground of rejection.”
The Federal Register Notice indicates that the MPEP will be revised to “provide improved guidance . . . as to what constitutes a new ground of rejection,” based on recent Federal Circuit decisions on this issue (such as In Re Leithem and In Re Stepan Co.). The new guidance is set forth in the Federal Register Notice and will be discussed in a future article.
Reply Brief (37 CFR §§ 41.40, 41.41)
The new rules provide that a Reply Brief must be filed within two months of the Examiner’s Answer, or within two months of a decision refusing to grant any petition filed to designate as “new” a ground of rejection set forth the Examiner’s Answer.
As now, the new rules prohibit any new amendments or Evidence from being submitted in a Reply Brief, and limit the arguments to those that were raised in the Appeal Brief or those that are responsive to arguments in the Examiner’s Answer.
Board Action (37 CFR § 41.50)
Like the current rules, the new rules outline the following as actions that the Board may take:
- Affirm, reverse or remand to the Examiner
- Enter a new ground of rejection.
- Request briefing and information on any matter that the Board considers to be of assistance in reaching a reasoned decision.
Appellants options if the Board issues a remand or enters a new ground of rejection also appear to remain the same under the new rules:
If the Board remands to the Examiner and the Examiner issues a “substitute Examiner’s Answer,” then the appellant has two months from the date of the substitute Examiner’s Answer to
- Reopen prosecution by filing a reply under 37 CFR § 1.111. This will be treated as a request to withdraw the appeal.
- Maintain the appeal by filing a reply brief.
Failure to pursue one of these options could lead to sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding.
If the Board includes a new ground of rejection in its decision, then the appellant has two months from the date of the decision to
- Reopen prosecution by amending the newly rejected claims or submitting new Evidence relating to the rejected claims (or both), in which event the prosecution will be remanded to the examiner.
- Request rehearing, stating with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection.
Failure to pursue one of these options could lead to termination of the appeal as to the rejected claims.
The rules seem to make it very difficult to overcome a new ground of rejection made by the Board. The rules state that such a new rejection is “binding” upon the Examiner unless an amendment or new Evidence is entered which the Examiner believes overcomes the new ground of rejection. The only way to overcome the new rejection by argument is through a request for rehearing.
Simplified But Not Simplistic
The new rules appear to simplify the appeals process in several respects. However, they still set forth very specific procedural requirements and deadlines that practitioners must take care to comply with. The commentary in the Federal Register Notice emphasizes the Board’s role in reviewing the Examiner’s rejections on the record before the Examiner, and emphasizes prosecution before the Examiner as the best way to obtain consideration of new amendments or evidence. At the same time, the Board’s ability to enter new rejections on appeal shows that the even if the appellant can overcome the Examiner’s rejections, the Board may find new ways to refuse to grant a patent. This provides further motivation for appellants to create a strong record that supports patentability from every angle.