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July 30, 2007

Appeal Boarding

The USPTO today published an extensive revision of the rules governing ex parte patent appeals, where an applicant's patent has been invalidated by the new, "leave no patent alive" obviousness regime imposed by the Supreme Court's KSR decision. Given that the majority of potential pre-KSR high-value patents may be no longer be enforceable, the patent office is expecting a crush from those trying to hold on to what they no longer have got.

Not one to have their railroad derailed, comments are tolerated until September 28; no public hearings. The proposed rules adhere to the current PTO theme song: "Do some work for us." The aim is to streamline the ex parte appeal process by tightening input requirements.

Proposed rules: web page (text); Acrobat/pdf (the Federal Register)

A quick glance at the proposed changes makes clear that there is no quick glance at the proposed changes.

The motivation -

The proposed rules seek to provide examiners and Office reviewers with a clear and complete statement of an appellant's position at the time of filing an appeal brief so as to enhance the likelihood that appealed claims will be allowed without the necessity of further proceeding with the appeal, minimize the pendency of appeals before the Office, minimize the need for lengthy patent term adjustments in cases where claims become allowable as a result of an action by the Board in an appeal, provide uniform treatment of requests for an extension of time filed after an appeal brief is filed, and make the decision-making process more efficient.

The Board is currently experiencing a large increase in the number of ex parte appeals. In FY 2006, the Board received 3,349 ex parte appeals. In FY 2007, the Board expects to receive more than 4,000 ex parte appeals. In FY 2008, the Board expects to receive over 5,000 ex parte appeals. These rules are proposed to change procedures in such a way as to allow the Board to continue to resolve ex parte appeals in a timely manner.


The proposed rules do not propose to change any of the rules relating to inter partes reexamination appeals. Nor do the proposed rules propose to change any of the rules relating to contested cases.

Some addressed topics:

Petition for Non-Appealable Issues (p. 41473; 41485)

Non-appealable issues include such matters as an examiner's refusal to (1) enter a response to a final rejection, (2) enter evidence presented after a final rejection, (3) enter an appeal brief or a reply brief, or (4) withdraw a restriction requirement.

Amendments and Evidence Filed After Appeal and Before Brief  (p. 41473; 41485)

Admission of amendments filed between the notice of appeal and the appeal brief are limited to: canceling claims, rewriting dependent claims into independent form; request to reopen prosecution in some circumstances; examiner discretion that the evidence overcomes rejection(s) and there's "good cause" why it wasn't presented before.

Appeal Briefs (pp. 41474-41481; 41485-41488)

New appeal brief headings: "(1) Statement of the real party in interest, (2) statement of related cases, (3) jurisdictional statement, (4) table of contents, (5) table of authorities, (6) status of claims, (7) status of amendments, (8) rejections to be reviewed, (9) statement of facts, (10) argument, and (11) an appendix containing (a) claims section, (b) claim support section, (c) drawing analysis section, (d) means or step plus function analysis section, (e) evidence section, and (f) related cases section."

This section tightens appeal brief filings to be more consistent in form (among appeals) and concise in substance; makes it easier for the patent office to "just say no."

Oral Hearings (p. 41481; 41488)

Pay to hear yourself talk, as if it will do you any good.

[A]t oral hearing only evidence that has been previously presented to, entered by and considered by the primary examiner would be considered and that no additional evidence may be offered to the Board in support of the appeal. An argument not presented in a brief could not be made at the oral hearing.

Decisions and Other Actions by the Board Decisions  (p. 41481-41482; 41488-41489)

Covers the gamut of possibilities. Neither the words "allow" nor "allowance" appear.

Rehearing (pp. 41482-41483; 41489-41490)

Yet another bite at the apple; as optimistic as an oral hearing.

Sanctions (p. 41483; 41490)

This anti-shenanigan section keeps you on your best behavior, or you and your patent are toasted. Your patent was toast before you got there anyway. As Bart Simpson, patent attorney, would counsel, "Don't have a cow."

Posted by Patent Hawk at July 30, 2007 4:16 PM | The Patent Office


(as I just posted at 271, as well)

Ex parte appeals include appeals from the Examiner's decision rejecting a patent application -- you appear to limit the commentary to Reexaminations.

The Board has jurisdiction to consider and decide ex parte appeals in patent applications (including reissue, design and plant patent applications) and ex parte reexamination proceedings.

The rules affected absolutely apply to appeals from rejected patent applications.

Posted by: Matt at August 1, 2007 2:00 PM