Feature Comment: An Overview of the New Rules for Appeal Briefs

By Fadi N. Kiblawi and James G. McEwen[1]

Introduction

Beginning on December 10, 2008, the United States Patent and Trademark Office (USPTO) will be implementing new rules applicable to the patent appeals process.  Specifically, the new rules will be effective for all appeals filed on or after this date. As such, this rule will potentially affect all pending applications.

According to the USPTO, a major objective of the amended rules for appeals is to avoid unnecessary returns to examiners by the Appeals Center and the Board of Patent Appeals and Interferences, along with the resulting delays in application and appeal pendency. The stipulations of the amended rules are believed by the USPTO to be more objective and, therefore, both appellants and examiners will have a better understanding of what is required.  Accordingly, the need to hold appeal briefs defective is intended to be minimized, if not altogether eliminated.

When initially proposed, the patent bar, and specifically the American Bar Association and the American Intellectual Property Law Associate, had strenuously objected to a number of the provisions.  Of specific concern was a perceived shift in burden under the rules by which applicants were required to provide additional information on support for the claimed subject matter (and hence providing statements which could be construed to limit the scope of the claims during enforcement),[2] as well as appendices requirements which included a requirement to attach the entire prosecution history to the appeal brief.[3]  Additional concerns raised included a number of formatting changes that, while not addressing any perceived problems, would increase the cost to applicants in pursuing an appeal.[4]  While the USPTO did address certain of these concerns, the USPTO substantially adopted the proposed rules in their presented form.  As such, the below article presents the new rules and provides additional detail on significant new elements to be included in the appeal brief.

New Rules in General

The new rules can be found online at: http://www.uspto.gov/web/offices/com/sol/notices/73fr32938.pdf.  According to the new rules, non-appealable errors must be resolved by petition prior to filing an appeal to the BPAI.  In fact, failure to timely file a petition seeking review of a decision of the examiner related to a non-appealable issue will generally constitute a waiver to have those issues considered.  Furthermore, the new rules remove the Summary of Invention (i.e., Summary of Claimed Subject Matter) in the Appeal Brief.  Instead, Applicant must file a claims analysis, which is essentially a claim chart indicating “the page line or paragraph after each limitation where the limitation is described in the specification as filed.”

Also, a 30 page limit and 14 point font requirement is set for the Grounds of Rejection, Statement of Facts (new), and Arguments, and new grounds of rejection are no longer permitted in the Examiner’s answer.  Similarly, the Examiner’s response to a reply brief is eliminated.

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.  Likewise, petitions for an extension of time to file a reply brief, request for oral hearing, or request for rehearing are also made under Rule 41.3, which requires a $400 fee.  Finally, a list of technical terms or unusual words must be provided to the transcriber at an oral hearing.

As a result of the new rules, a complete appeal brief includes the following, with the more significant changes being highlighted in bold:

  1.         i.            Statement of the real party in interest
  2.       ii.            Statement of related cases
  3.     iii.            Jurisdictional statement
  4.     iv.            Table of contents
  5.       v.            Table of authorities
  6.     vi.            Status of amendments
  7.   vii.            Grounds of rejection to be reviewed
  8. Statement of facts
  9.     ix.            Argument
  10.       x.            Appendix including
    1.                     i.            Claims section
    2.                   ii.            Claim support and drawing analysis section
    3.                 iii.            Means or step plus function analysis section
    4.                 iv.            Evidence section
    5.                   v.            Related cases section

The bolded sections will be discussed below in greater detail.

Formatting Changes

As a result of the new rules, the format of the appeal brief will be changed.  Specifically, under 37 CFR 41.37(v), there is a limit on the number of pages: 30 for the Grounds of Rejection, Statement of Facts, and Arguments.  There is a required font size: 14 point and lines must be double spaced.[5]  Both of these formatting changes are designed to force more concise appeal briefs in a manner more consistent with Federal Court practice, but which was never a requirement in ex parte appeals before the Board.

Another change will be requirements for a Jurisdictional statement, a Table of Contents for both the Appeal Brief and the Evidence section, and a Table of Authorities.  While the AIPLA objected to these provisions as adding costs to the process without discernable benefit, the USPTO adopted the rules.  The Jurisdictional Statement should be uniform since all appeals during examination will be pursuant to 35 U.S.C. §134, and therefore should not result in the complained of cost increase.  However, while commercial programs such as Microsoft Word allow the automatic generation of Tables of Contents and Tables of Authorities, the use of these features will require retraining of personnel, and thus result in increases in cost of filing the appeal.

Lastly, there is now a requirement in 37 CFR 41.37(v)(1) that all pages, including appendices, be sequentially numbered.  While not a significant problem for the brief itself, for the appendices and documents submitted with the appeal brief, this numbering element will likely catch many practitioners buy surprise as it is a new requirement and is not easily rectified outside of purchasing new software which allows bates labeling of documents.

Statement of Facts

Under the new rules, the applicants are now required to provide a statement of facts.  Specifically, under 37 CFR 41.37(n), applicants are to provide, in “an objective and non-argumentative manner the material facts relevant to the rejections on appeal.”  Moreover, applicants will be required to cite support in the record for the facts presented in the statement of facts, as well as provide “where applicable, a specific line or paragraph, and drawing numerals.”  The USPTO believes that such a requirement is not burdensome and is advantageous in many ways.  Specifically, the USPTO touts the advantage as follows:

A well-written statement of facts can tell a ‘‘story’’ in an objective manner, particularly when each statement of fact is supported by a citation to a specific portion of the evidence. Often telling the story objectively convinces the trier of fact of the merit of a position. After reading an objective concise statement of facts, it is not unusual for a trier of fact to look with anticipation for an answer.[6]

To the extent that the USPTO extols these virtues, applicants are going to need to understand the downsides of such story telling.  First, since the Examiner is usually given the discretion to determine whether an Appeal Brief complies with the rules, Examiners may be tempted to use the “objective” requirement in order to improperly reject Appeal Briefs as not complying with the applicable rules, thereby increasing the pendency and cost.  Such a temptation may exist where the Examiner has not timely responded to an Appeal Brief or where the Examiner does not want, for whatever reason, to allow a case to go to appeal but also refuses to issue a notice of allowance.

Second, the statement of facts will be fertile grounds for charges of inequitable conduct since the story being told will necessarily be concise, thereby leaving out portions of the prosecution which do not appear during prosecution to be significant but which a litigator will latch onto during litigation as being significant omissions which misled the Board.  Thus, the statement of facts will need to be carefully constructed, thereby increasing the costs of filing the appeal brief.

Argument

Under existing rules, applicants were able to present arguments on appeal without detailing whether such arguments were presented during prosecution.  Any Examiner response would therefore be included in the Examiner’s Answer.  However, the revised rules, 37 CFR 41.37(o), require applicants to specify whether and where such arguments were presented during prosecution.  In this way, the Board will be able to determine what issues have been considered by the Examiner and what arguments are newly presented.  Lastly, in order to prevent new arguments to be raised during oral argument, 37 CFR 41.37(o) cautions that any “finding made or conclusion reached by the examiner that is not challenged will be presumed to be correct.”  As such, within the space constraints allowed under the new formatting rules, applicants will have to ensure that all reasonable traversals of an Examiner’s position are presented or risk losing an opportunity to bring up the argument later at oral argument.

Claim Support and Drawing analysis Section

Under the existing appeal rules at 41 CFR 41.37(c)(v), applicants were required to provide a summary of the invention including a “concise explanation of the subject matter defined in each of the independent claims involved in the appeal, which shall refer to the specification by page and line number, and to the drawing, if any, by reference characters.”  This requirement has proven troublesome as each Examiner appears to have a different interpretation of this rule, resulting in applicants having Appeal Briefs rejected for failure to comply with this rule.  As such, the USPTO has replaced this requirement with a requirement for a new claim support section.

Under 37 CFR 41.37(r), applicants are required to provide, for each appealed claim being argued separately, a marked up copy of the claim “indicating in boldface between braces ({ }) the page and line or paragraph after each limitation where the limitation is described in the specification as filed.”  As such, the claims support appendix will provide a more focused explanation of the claims as compared to the existing summary of invention, and will be subject to fewer disputes.  However, as with the statement of facts section, the annotation of the claims will provide tempting grounds during litigation for arguing that a particular limitation is limited only to the specific example cited in the appendix.  Thus, the claim support section will need to be carefully constructed to ensure that a narrow interpretation of the claims is not inadvertently created, thereby increasing the costs of filing the appeal brief.

  1.                 vi.            Means or step plus function analysis section

Under existing appeal rules, applicants were required to provide support for any means or step plus function limitations within the summary of the invention.  This requirement has been generally maintained, but has been given its own appendix.   As in the claim support and drawing analysis section, such a limitation is to be set forth in “an annotated copy of the claim …  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.”  37 CFR 41.37(s).  While seemingly redundant in view of the claim support and drawing analysis section, the separate designation should help the Board distinguish between regular claims and those relying upon 35 U.S.C. §112, ¶6.

Conclusion

Whether applicants agree or disagree, on December 10, 2008, the new appeal rules are going to be implemented and there is little indication that the patent bar will go to court to attempt to stop the implementation of these rules.  As such, applicants can expect to pay additional attorneys fees in order to obtain the broadest possible coverage for an invention and to obtain relief from unsupportable rejections.  Thus, where an application is currently rejected improperly, applicants may well be advised to file the appeal as soon as possible in order to avoid these costs as well as to avoid some of the above‑described risks in complying with these new rules during later enforcement.


[1] The opinions in this article do not represent the official positions of Stein McEwen, LLP.

[2] Letter from ABA to USPTO Re: Proposed Changes to the Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals (Sept. 28, 2007).

[3] Letter from AIPLA to USPTO Re: Comments on Proposed Rule: “Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals” (Sept. 28, 2007).

[4] Id.

[5] An exception is made for block quotes, which need only be 1.5 spacing, as well as for headings.  37 CFR 41.37(v)(2).

[6] Federal Register, Vol. 73, No. 112, p. 32960 (June 10, 2008).

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