June 10, 2008
Facing an onslaught of appeals because of abysmal examination, the USPTO has new rules to streamline the appeal process. Appeals in a single round. Gone: examiner response to an appeal brief, and the ability to raise new grounds of rejection in examiners' answers. From the announcement:
Briefing requirements that were not necessary for the appeal - such as the "summary of the claimed subject matter" - are no longer required. The facts and arguments required in the brief are focused on distilling the issues of the dispute and establishing where the examiner erred in the rejection. Finally, page limit requirements ensure concise and clear arguments.
In the Federal Register, self-admission that examination quality is circling the rim of the bowl:
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.
More on the new rules:
The amended rules make clear that the Board is not a tribunal for de novo examination. The rules establish procedures to determine whether an appellant has established that the examiner erred. For example, the rules require the appellant's argument shall explain why the examiner is believed to have erred as to each rejection to be reviewed. Arguments not made are waived.
Some former rules have turned out in practice to be too subjective. For example, the former rules require a summary of the invention. Appellants, as well as examiners, have given different interpretations to the requirement for a summary of the invention. 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.
The amended rules are directed to improving appellant briefing. A 30-page limit for the brief will promote concise and precise writing... 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.
Appeals become focused on pointing out examination error. The thrust is to make clear to SPEs spurious rejections, and cut the PBAI appeals pile.
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. By having a clear focus on the dispute and making clear what arguments have been and have not been presented to the examiner, the USPTO reviewers as well as the examiner can make a well-informed decision on (1) whether to proceed with the appeal or (2) whether to withdraw the rejection.
Effective date: December 10, 2008.
The newly minted Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals, 73 Federal Register 32938 (June 10, 2008)(Final Rule), 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.
Unlike the earlier-promulgated but now curtailed "Continuation Rules" (which would have been a major substantive disaster for major industry), the newly minted PTO Appeal Brief Rules, are unlikely to face an industry challenge: They are merely a very expensive inconvenience and technical trap for the unwary that major industry can deal with - albeit at significant and unnecessary costs.
Gross Unfairness to Small Entities and Boutique Practices: The PTO rules will have a dramatic impact by shutting off much of the flow of appeals; it is difficult to imagine that a boutique that only occasionally files an appeal will be able to successfully run the procedural gauntlet necessary to pass through the appellate gates absent extraordinary efforts; many will try, and many appeal briefs will be procedurally bounced.
Commentary from David E. Boundy of Cantor Fitzgerald, beginning with the PTO misinterpreting the outcry in comments against the new appeal rules:
The Response to Comments repeatedly misparaphrases the comments, and then replies to the misparaphrase, rather than fairly addressing the comment.
The Board seems willing to make up facts out of thin air. Several comments pointed out that preparing a Table of Authorities using MS Word "Table of Authorities" tool takes hours. The Board says, with no identified factual basis, that it takes "10 to 15 minutes" to generate Table of Contents and Authorities with no identification of what tool generates a Table of Authorities in that amount of time.
Several comments pointed out that the Federal Circuit permits skipping page numbers in the Appendix in order to make it tractable to prepare the appendix and refer to the page numbers in the body of the brief. The Board declined to adjust the page numbering rule, and instead insists that page numbers begin at 1 and continue consecutively through the appendix. God help the appellant who needs to insert an additional page in the last few days before filing the brief.
Several people raised substantial issues under Paperwork Reduction Act and Executive order 12866. The PTO simply brushed the issues aside with no comment, except to baldly assert that the Appeal Rule imposes zero cost of compliance and zero sacrifice of rights, with no identified basis. The PTO's certification to Office of Management and Budget of "not significant" allowed the PTO to evade review under Executive Order 12866. Even on the best possible view of the facts presented in the Final Rule notice, the PTO concedes that the burden of this rule is at least above the threshold for "significant," and the PTO failed to reply to comments showing that it is likely "economically significant," the highest category of burden. This failure to reply to public comments violates both the spirit of the Executive Order and the Administrative Procedure Act.
The new Appeal Rule 41.39(b) provides "No new ground of rejection. An examiner's answer shall not include a new ground of rejection." First of all, this is illegal - it is not a "logical outgrowth" of the rule as published in the Notice of Proposed Rule Making (recall this is one of the grounds on which Judge Cacheris preliminarily enjoined the PTO's Continuations and Claims rules in October). Second, this was the rule during the period 1998-2004. However, the Board refused to enforce the rule during the time it was in effect, Ex parte Brissette, 2002 WL 226585 (BPAI May 19, 2000); Ex parte Deacon, 2002 WL 226993 (BPAI 2000), so as a practical matter, examiners were free to throw in new grounds of rejection at any time, and applicants were constrained in their ability to reply.
Since 2001, the PTO has regarded rules of procedure as expendable, to be ignored when constraining PTO action but enforceable when applicable to constrain applicants, and Due Process is something for dewey-eyed foreigners. This Notice of Final Rulemaking appears to continue the trend.
Posted by Patent Hawk at June 10, 2008 1:53 PM | Prosecution
Call that "coherent storytelling"? Incoherent babbling, more like. What, exactly, is your point, Mr Hawk?
Posted by: Tufty the Cat at June 10, 2008 10:49 PM
I think his point is that there are new appeal rules, the PTO says they streamline the process and other commentators disagree...what don't you get about that Cat?
Posted by: Scott at June 11, 2008 7:53 AM
Perhaps you haven't read Mr Hawk's recent comments about this Kat's storytelling abilities (see the "numpties" posting). Call it a private childish feud if you like, but I still think Mr Hawk is just as much a rubbish storyteller as me, if not worse.
Posted by: Tufty the Cat at June 12, 2008 3:25 AM
Hal writes "it is difficult to imagine that a boutique that only occasionally files an appeal will be able to successfully run the procedural gauntlet necessary to pass through the appellate gates absent extraordinary efforts.."
I guess, Hal, that you big GP guys will just have to help us boutique country bumpkins with the appeal process then. Please publish articles showing us the pitfalls and how to avoid them; and please publish annotated sample appeal briefs. Thank you
Posted by: boutique country bumpkin at June 15, 2008 1:42 PM