On June 10, 2008, the final rules governing practice before the Board of Patent Appeals and Interferences (BPAI) of the United States Patent and Trademark Office (USPTO) were published in the Federal Register. The new rules will apply to all appeal briefs filed on or after December 10, 2008. According to the USPTO, the rules are necessary to enable the BPAI to handle an increasing number of appeals more efficiently. The rules are also said to benefit practitioners and expedite prosecution by (1) reducing the number of briefs held defective; and (2) prohibiting the examiner from raising a new ground of rejection in the Answer. However, the rules introduce numerous formal requirements that will add to the preparation time and thus to the cost of filing an appeal brief.
The major differences that distinguish the new rules from previous briefing practice involve changes in format and the imposition of sanctions for failure to comply with the rules. All briefs, both the original appeal and reply, must now contain the following sections: (1) statement of the real party in interest; (2) statement of related cases identified by application, patent appeal, interference or court docket number; (3) jurisdictional statement; (4) table of contents; (5) table of authorities; (6) [reserved] (7) status of the amendments; (8) grounds of the rejections to be reviewed; (9) statement of facts; (10) arguments; and (11) appendix. The appendix must further contain (a) a claims section, (b) a claims support and drawing analysis section, (c) a means or step plus function analysis section, (d) an evidence section, and (e) a related cases section.
At first blush, the rules might appear to simplify the briefing format but, as usual, the “devil is in the details.” The jurisdictional statement, for example, must include (1) the date of the decision from which the appeal was taken; (2) the date the notice of appeal was filed; (3) the date the appeal brief is being filed; (4) the dates of any requested extensions of time; (5) the date the extension of time was granted. Thus, rather than a simple statement of the statute under which the BPAI has jurisdiction, a brief must enumerate each step taken in the appeal process and the dates on which said steps were performed.
The statement of facts section of the brief must consist of numbered short declarative sentences setting forth a single fact that clarifies “the position of an appellant on dispositive issues and assist the examiner in reconsidering the patentability of the rejected claims.” Each fact must be supported by a citation to the page number or drawing in the Record (the official content of the file of an application or reexamination proceeding on appeal). This new requirement is said to be important because in the past some appeal briefs did not sufficiently develop the facts, making it necessary for the Board to ferret them out of the record.
The argument section must contain separate headings for each ground of rejection and an explanation as to why the appellant believes the examiner is in error. In addition, for each argument the appellant must identify where the argument was first made to the examiner or state that the argument has not previously been made. Similar to the statement of facts section, the argument must identify the page in the record where the examiner made the point to which the appellant is responding. Each claim that an appellant wants to have considered separately must be separately argued under a separate heading; otherwise the Board may select a single claim and presume that the claims stand or fall together.
In addition, similar to Bd.R. 41.128, which governs interference practice, the new ex parte briefing rules now provide for sanctions against an appellant for misconduct. Examples of misconduct include: (1) failure to comply with an order entered into an appeal or an applicable rule; (2) advancing or maintaining a frivolous argument; or (3) engaging in dilatory tactics. Sanctions may involve an order expunging a paper or precluding an appellant from filing a paper, holding the application on appeal to be abandoned or reexamination proceeding terminated, dismissal of the appeal, etc.
Only a few of the new briefing requirements have been discussed above. Practitioners are advised to carefully study the final rules because they contain many traps for the unwary. The new rules focus primarily on procedural, not substantive, changes to an appeal brief. Contrary to one of the stated goals of the final rules, this new emphasis on form over substance makes it more likely that the USPTO will find a brief defective.