Patent Appeal Brief Practice Tips

On December 7, 2005, Carl Oppedahl offered the following patent Appeal Brief Practice Tips on the EFS Listserv:

In recent months we have noticed a new practice by USPTO regarding appeal
briefs. It seems clear the Examiners are being trained to scrutinize each
appeal brief and to identify at least one real or perceived defect in the
brief. The at least one real or perceived defect in the brief is then
communicated to the filer in a Notification of Non-Compliant Appeal Brief.
The filer is then required to file an amended brief or other appropriate
correction, absent which the application would be deemed abandoned.

Recall that under Rule 41.37, one of the required sections in any appeal brief is a "Related Appeals and Interferences" section. Of course most of the time there are
no related appeals or interferences, and thus this section is one sentence long
-- "There are no related appeals or interferences known to the applicant." Rule 41.37 also says that if there are any decisions rendered by a court or the Board
in the proceeding identified in the "Related Appeals and Interferences" section,
the filer is required to provide copies of those decisions in an appendix. Of course, if there are no related appeals or interferences, and if the brief says this, then it is impossible for there to be any decisions, and thus there cannot be any such appendix.

Notwithstanding this, in two of our recent appeals in which we said in our brief that there were no related appeals or interferences, we received a Notification of Non-Compliant Appeal Brief stating that our brief was defective for failure to provide this appendix containing the (non-existent) decisions.

We telephoned the Examiner in one of the cases. She cheerfully explained that our mistake was in failing to provide an empty appendix. In each case we filed an empty appendix, and the problem went away.

Another example of this kind of real or perceived defect in the appeal brief is the appendix containing copies of the evidence relied upon by the appellant in the
appeal. Of course if the appellant is not relying upon any such evidence,
then there is nothing to put into such an appendix. Notwithstanding this,
in one recent appeal our brief was bounced for failure to include an empty
appendix containing (or rather, not containing) such evidence.

Yet another example of this is the part of Rule 41.37 where it says that in the brief, each section must be "under the proper heading". In one of our briefs, we had
each heading as the first few words of a paragraph (in bold face and
italics). The Examiner said that was not "under" the heading. We
were forced to reprint the brief with a line break between each heading and its
respective section. Only after we did this did the Examiner agree that it
was "under".

The practice tip is to provide both of these appendices even if they are empty. The other practice tips here are:

• use Partridge so that you will learn instantly that the Notification of Non-Compliant Appeal Brief has been mailed;
• prepare the response to the Notification without delay
• file the response instantly using EFS-Web
• check IFW to make sure the response is there

That way you minimize the number of days of loss of PTE or PTA that will be attributed to the failure of compliance by the filer. If you can't or won't use Partridge, at least check the OCN's daily. If you aren't in the EFS-Web beta, then file the response by fax (not by mail) to get it into the system as soon as possible.

Other contributors confirmed that they were having the same problem and wondered if this is merely a ploy by the U.S. Patent Office to buy more time to respond. While the USPTO may be following the letter of its own regulations, they are probably not living up to the spirit of the law. As pointed out by Michelle Cimbala, Comment 60 and its answer on page 49978 of the pertinent Notice of Final Rulemaking published at http://www.uspto.gov/web/offices/com/sol/notices/69fr49960.pdf suggest that a blank page should not be required:

Comment 60: One comment requests clarification as to whether appendixes as
required by §§ 41.37(c)(ix-x) are necessary at all when no evidence or related
proceedings exist, or whether an appendix must be included with the indication
‘‘none.’’

Answer: Sections 41.37(c)(ix-x) require the appeal to contain an
evidence appendix and a related proceedings appendix. If no evidence or related
proceedings exist, an evidence appendix should be included with the indication
‘‘none’’ and a related proceedings appendix should be included with the
indication ‘‘none.’’ In addition, a brief containing a Table of Contents
indicating that no evidence appendix is part of the brief or that no related
proceedings appendix is part of the brief would be acceptable under the Rule
since it would clearly indicate that no evidence is being relied upon by the
appellant in the appeal or that no related proceedings having decisions rendered
by a court or the Board exist.