The USPTO has published proposed changes to the rules governing practice before the Board of Patent Appeals and Interferences. While the proposed changes salvage a few elements from the 2008 "Final Rules" that never took effect, the USPTO plans to rescind that rules package. In its place, the USPTO has proposed a rules package that appears to strike a reasonable balance between facilitating Board review and simplifying the appeals process for applicants.

The proposed changes apply only to ex parte appeals. They do not apply to appeals in "contested cases," such as inter partes reexamination proceedings or interference proceedings.

The Big Picture

According to the Federal Register notice, the proposed changes are intended to achieve the following goals:

  • ensure that the Board has adequate information to decide ex parte appeals on the merits, while not unduly burdening appellants or examiners with unnecessary briefing requirements.
  • eliminate any gap in time from the end of briefing to the commencement of the Board’s jurisdiction, and minimize the number of appeals that transfer back-and-forth between the Board and the examiner.
  • clarify and simplify petitions practice on appeal.
  • reduce confusion as to which claims are on appeal.

Notable Changes 

The USPTO highlights seven "notable changes:"

  1. The Board would presume that an appeal pertains to all rejected claims unless claims are canceled by the appellant.
  2. The Board would take jurisdiction upon the filing of a Reply Brief (or the expiration of the time period for doing so).
  3. An Appeal Brief would no longer be required to include a statement of the status of the claims, a statement of the grounds of rejection to be reviewed on appeal, a claims appendix, an evidence appendix or a related proceedings appendix
  4. If an Appeal Brief does not include a statement of the real party-in-interest, the Board will presume that the real part-in-interest is the inventor(s), and if an Appeal Brief does not include a statement of related cases the Board will presume that there are none.
  5. Any rejection in an Examiner’s Answer that relies upon new evidence shall be designated as a new ground of rejection. 
  6. If an appellant files a petition for review of an examiner’s failure to designate a rejection in the Examiner’s Answer as a new ground of rejection, the deadline for filing a Reply Brief will not expire until two months after the petition has been decided.
  7. An examiner would not respond to a Reply Brief.

New Appeal Brief Requirements

While the proposed changes would eliminate many existing Appeal Brief requirements, they would impose some new ones. A few examples include:

  • Instead of a statement of the status of any amendment filed after a final rejection, an Appeal Brief would have to include a statement identifying the last entered amendment.
    • The Board will use this information to identify the claims on appeal.
    • If no such statement is included, the Board will assume that the claims were not amended.
  • The summary of claimed subject matter would have to include an annotated copy of each rejected independent claim, which provides for each claim limitation in dispute a reference to the specification by page and line number or by paragraph number, and to the drawing, if any, by reference characters, sufficient to understand the claim. Further requirements would apply to independent and dependent claims with means-plus-function or step-plus-function language.
    • The Federal Register notice includes two examples of acceptable formats (one with page and line number citations and one with paragraph number citations) and notes that it is "important to impose a specific format" requirement to ensure that the information provided is useful to the Board.
    • The proposed rules specify that citations to the published application document will not satisfy these requirements.
  • The proposed rules would expressly state that "any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal."
    • The proposed rules drop the controversial "presumption of examiner correctness" that was included in the "Advance Notice of Proposed Rulemaking" published December 22, 2009.
  • The "Argument" section would have to include separate headings for "each ground of rejection," using headings that "reasonably identify the ground of rejection being contested (e.g., by claim number, statutory basis, and applied reference, if any)." Subheadings would be required for claims argued separately.
    • The proposed rules would do away with the requirement for parallel citations to the USPQ.
    • The Federal Register notice includes examples of suitable argument headings.

Other Proposed Changes

  • Any Information Disclosure Statements or Petitions (other than those authorized by the appeal rules) would be held in abeyance until the Board’s jurisdiction over the appeal ends.
  • The Examiner’s Answer would not have to set forth grounds of rejection already set forth in a final office action or advisory action.
    • The requirements for Examiner’s Answers are being simplified so that the Examiner’s Answer can focus on responding to the Appeal Brief.
    • The Federal Register notice includes examples intended to shed light on "what constitutes a new ground of rejection."
  • The proposed rules would eliminate the Board’s authority to remand to the examiner, while retaining Director-ordered remands.
    • The USPTO believes that "remands should be used sparingly."
  • The proposed rules would retain the Board’s authority to enter new grounds of rejection, but would eliminate the Board’s ability to suggest claim amendments to overcome a rejection.

Compliments & Concerns  

I filed a number of Appeal Briefs shortly before December 10, 2008 in order to avoid the 2008 Final Rules. In contrast, this new rules package brings welcome changes that have me wishing that my pending Appeal Briefs could be filed under their provisions.

Just recently I’ve had to revise a draft brief to provide page and line number citations (rather than paragraph number citations) in the "summary of claimed subject matter section," and correct which claims were listed in the "status of the claims" section (all claims ever filed, even if withdrawn or canceled) and which were set forth in the "claims appendix" (only the claims on appeal). I won’t miss these requirements when they are gone.

However, there are two proposed changes that concern me:

  1. The elimination of the requirement to set forth the claims on appeal. 

    I find it helpful to have a full listing of the claims on appeal in an Appeal Brief. This current requirement makes it easy for the appellant, examiner and Board to review the claim language at issue and quickly identify any mistakes or misunderstandings as to the precise language of the claims on appeal. I am afraid that replacing this requirement with a mere reference to an amendment will create confusion.

  2. The requirement to annotate "each claim limitation in dispute" in a manner "sufficient to understand the claim."

    As I understand the current rules, the main goal of the current counterpart of this requirement is to permit the Board to easily confirm that the claims satisfy the written description requirement. The purpose of the proposed requirement is less clear, though. If written description were the only concern, then only limitations subject to written description rejections would need to be annotated, but I don’t read the proposed rule so narrowly.

    On the other hand, its not clear how providing citations that support claim terms will be helpful to resolving disputes over other issue, such as obviousness. The appellant and examiner may agree as to the meaning of the claim language, but disagree as to the relevance of the cited art. In such a case, no amount of annotation will help the Board resolve the dispute.

    While the proposed rule provides that the annotation need only be "sufficient to understand the claim," I won’t be surprised if some practitioners take an over-inclusive approach, and try to cite all relevant portions of the specification. This may be particularly tempting if there is concern that the Board won’t consider other portions of the specification the appellant might want to rely on later. 

Public Comments

The public has an opportunity to raise these and other concerns by submitting written comments to the USPTO by January 14, 2011. If you have compliments or concerns about the proposed rules, I welcome your comments here, and encourage you to submit them to the USPTO for official consideration.