New USPTO Patent Appeal Procedures Start December 10, 2008

On June 10, 2008, the USPTO published new Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals; Final Rule. The new rules apply to all appeals in which an appeal brief is filed on or after December 10, 2008.

The change "represents an extremely expensive and highly technical trap for the unwary that will severely punish underfunded entities as well as boutiques unaccustomed to detailed procedural practice," comments Professor Wegner. He sees the this portion of the Notice as "the key reason why the PTO has found it necessary to make this change in the rules:"

Presently, the Board is experiencing a rapid increase in ex parte appeals. In FY
2007, the Board received 4639 ex parte appeals. The number of appeals received
in FY 2007 exceeded the appeals received in FY 2006 by more than 1000 appeals. In FY 2008, the Board expects to receive more than 6000 ex parte appeals. The amendments to the rules governing ex parte appeals are one item of a five point plan to ensure that the Board will be able to handle an increasing number of ex parte appeals in a timely manner.

According to the Notice, "the primary changes in this rule are:"

1. The requirements for an appeal brief include new sections for jurisdictional statement, table of contents, table of authorities, statement of facts, new format for arguments in the appeal brief and for claim support and drawing analysis section and means or step plus function analysis section in the appendix of the appeal brief, new section for table of contents in the evidence section of the appendix, new format in 14-point font, and 30-page limit for the grounds of rejection, statement of facts, and argument sections,
2. The requirements for a reply brief include new sections for table of contents, table of authorities, statement of additional facts, new format for arguments in the reply brief, new format in 14-point font, and 20-page limit for the statement of additional facts and argument sections,
3. The requirements for a request for rehearing include new sections for table of contents, table of authorities, new format for arguments in the request for rehearing, new format in 14-point font, and 10-page limit for the argument section,
4. new grounds of rejection are no longer permitted in an examiner’s answer,
   the examiner’s response to a reply brief is eliminated,
5. petitions to exceed the page limit for an appeal brief, reply brief or request for rehearing are made under Rule 41.3 which requires a $400 fee,
6. petitions for an extension of time to file a reply brief, request for oral hearing, or request for rehearing are made under Rule 41.3 which requires a $400 fee, and
7. a list of technical terms or unusual words to be provided to the transcriber at the oral hearing.

Other potentially noteworthy aspects of the changes include:

• The amended rules replace the requirement for a summary of the invention with a claims and drawing analysis and a means or step plus function analysis. For each independent claim involved in the appeal and each dependent claim argued separately, the claim support and drawing analysis section in the appendix shall consist of an annotated copy of the claim (and, if necessary, any claim from which the claim argued separately depends) indicating in boldface between braces ({ }) the page and line or paragraph after each limitation where the limitation is described in the specification as filed. If there is a drawing or amino acid or nucleotide material sequence, and at least one limitation is illustrated in a drawing or amino acid or nucleotide material sequence, the ‘‘claims support and drawing analysis section’’ in the appendix shall also contain in boldface between the same braces ({ }) where each limitation is shown in the drawings or sequence.

• The amended rules also require a ‘‘statement of facts’’ section where the appellant is required to set out the material facts relevant to the rejections on appeal. The ‘‘statement of facts’’ shall set out in an objective and non-argumentative manner the material facts relevant to the rejections on appeal. A fact shall be supported by a reference to a specific page number of a document in the Record and, where applicable, a specific line or paragraph, and drawing numerals. A general reference to a document as a whole or to large portions of a document does not comply with the requirements of this paragraph.

• The amended rules require an ‘‘argument’’ section where an appellant shall explain why the examiner is believed to have erred as to each rejection to be reviewed. Any explanation must address all points made by the examiner with which the appellant disagrees and must identify where the argument was made in the first instance to the examiner or state that the argument has not previously been made to the examiner. The ‘‘argument’’ shall explain why the examiner erred as to each ground of rejection to be reviewed. Any explanation must address all points made by the examiner with which the appellant disagrees. Any finding made or conclusion reached by the examiner that is not challenged will be presumed to be correct. For each argument an explanation must identify where the argument was made in the first instance to the examiner or state that the argument has not previously been made to the examiner. Each ground of rejection shall be separately argued under a separate heading. Unless a response is purely legal in nature, when responding to a point made in the examiner’s rejection, the appeal brief shall specifically identify the point made by the examiner and indicate where appellant previously responded to the point or state that appellant has not previously responded to the point. In identifying any point made by the examiner, the appellant shall refer to a page and, where appropriate, a line or paragraph, of a document in the Record.

• Petitions are decided by the Chief Administrative Patent Judge of the Board. Under former rules, petitions are decided by the Director of each Technology Center.

• The rules also allow for sanctions which may be imposed against an appellant for failure to comply with an applicable rule.

• The rules do not amend any of the rules relating to inter partes reexamination appeals. Except for citation of authorities, the rules do not amend any of the rules relating to contested cases.

• When two or more claims subject to the same ground of rejection are argued as a group, the Board may select a single claim from the group of claims that are argued together to decide the appeal on the basis of the selected claim alone with respect to the group of claims as to the ground of rejection. Any doubt as to whether claims have been argued separately or as a group as to a ground of rejection will be resolved against appellant and the claims will be deemed to have been argued as a group.

• the ‘‘means or step plus function analysis section’’ in the appendix shall consist of an annotated copy of the claim (and, if necessary, any claim from which the claim argued separately depends) indicating in boldface between braces ({ }) the page and line of the specification and the drawing figure and element numeral that describes the structure, material or acts corresponding to each claimed function.

• For appellants taking advantage of the Office’s newly instituted pre-appeal brief conferences, an appeal brief is not due until the results of the pre-appeal conference are mailed to appellant.