© 2009, Michael E. Kondoudis
As several patent blogs have recently discussed, the backlog at the Board of Patent Appeals and Interferences (BPAI) has topped 20 months and shows few signs of decreasing any time soon. New appeals are being filed at a rate of about 2.5 times the disposal rate. Also, new rules limiting continuing practice may still be put into effect, which would certainly increase the rate of future appeals.
One way to avoid further extending the time to have an appeal heard is to avoid having to submit an amended appeal brief because the original was deemed non-compliant. Knowing the requirements set forth in the Rules and the MPEP may not be enough, however. This is because an appeal brief may fully satisfy each and every requirement set forth in the Rules and the MPEP and still be returned as non-complaint.
Sections 1205 - 1205.03 of the MPEP address appeal briefs. In those sections, one will find:
1205 - the Rule governing appeal briefs, 37 CFR 41.37;
1205.01 - the timing for filing the appeal brief;
1205.02 - the required content for an appeal brief; and
1205.03 - how the Office deals with non-compliant appeal briefs.
Obviously, MPEP § 1205.02 is a good place to start when preparing an appeal brief. Relying solely on the MPEP and Rule 37 CFR 41.37 may not be advisable, however.
Not widely known is that the USPTO Appeal Center uses an internal checklist to judge whether an appeal brief is compliant (and accepted) or is non-compliant (and returned to the appellant for resubmission). Following this link to download the Checklist.
A review of the Checklist is illuminating. For example, it instructs Appeal Center reviewers that an appeal brief should not be held non-complaint merely because:
1. the required sections are “not in the order indicated”;
2. there is no statement of the real party in interest (because the Office will assume the named inventors are the real part in interest;
3. there is no statement of related cases (because the Office will assume that there are no related cases; and
4. there is no evidence section (because the Office will assume that that there is no evidence.
The Checklist, however, does much more than just identify various minor deficiencies that do not alone rise to non-compliance. In fact, a review of the checklist reveals possible additional requirements that are not found in 37 CFR 41.37 or in the MPEP. The following are a few examples.
Status Identifiers in the Claim Appendix
Item 9 of the Checklist inquires about whether the claims listed in the Claims Appendix are accompanied by status identifiers. MPEP § 1205 and 37 CFR 41.37 only require a claim appendix that includes a clean, accurate version of all pending claims in numerical order, however. Specifically, 37 CFR 41.37, subsection (c)(1)(iii)(“Status of claims”) only requires:
A statement of the status of all the claims in the proceeding (e.g., rejected, allowed or confirmed, withdrawn, objected to, canceled) and an identification of those claims that are being appealed.
Nonetheless, the Checklist instructs a reviewer to return to the appellant as non-compliant any appeal brief that lacks status identifiers in the Claims Appendix.
Table of Contents
Item 3 of the Checklist inquires about the presence of a table of contents and instructs the Appeal Center reviewer to hold an appeal brief non-compliant if a table or its heading is omitted. But, neither Rule 41.37 nor the MPEP requires a table. In fact, MPEP § 1205.02 actually characterizes tables of contents or authority as merely desirable and instructs that an appeal brief may comply with 37 CFR 41.37 even when those tables are absent.
Page Numbering
Item 13 of the Checklist inquires about the page numbering, which is a requirement not found in either the MPEP or Rule 41.37. Nonetheless, according to the Checklist:
The pages of the appeal brief, including all sections of the appendix, shall be numbered consecutively … beginning with the first page of the appeal brief, which shall be numbered page 1.
While admittedly imprudent to submit an Appeal Brief without consecutive page numbers, this is not the only formatting requirement that is found in the Checklist but not in the MPEP.
Conclusion
The bottom line, whether supported or unsupported, every appellant needs to be aware of the Checklist and the additional requirements that it appears to impose on appeal briefs. Ignoring these additional requirements increases the chances that an appeal brief will be returned as non-compliant, which would extend the already lengthy wait for a BPAI decision.
The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com
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July 23rd, 2009 at 8:58 pm
Michael - I really enjoy your blog - lots of great practice tips. One thing about the Appeals Brief checklist you discussed is that it is for the Appeal Brief Rules that were supposed to go into effect last December but were put on hold. The use of the new Brief format is optional, and thus the checklist may be useful in those cases, but I don’t know anyone who is using the new Brief format since the old/current format is much more user-friendly. - Brian
July 26th, 2009 at 4:11 pm
In support of Brian’s comment, we’ve been filing plenty of Appeal Briefs without status identifiers in the claim listing, and I don’t remember any coming back as non-compliant.Has anyone had experience of these checklist requirements being enforced?
July 27th, 2009 at 11:05 am
Our office had one come back because it did not have a table of contents. Maybe it depends on the reviewer?
July 27th, 2009 at 9:21 pm
Anonymous, Did you point to MPEP 1205.02 which states that, “A brief is in compliance with 37 CFR *>41.37(c)(1)(i) to (x).”
A table of contents is not in items (i) to (x).
This raises the question, how do you traverse an examiner’s allegation that an appeal brief is non-compliant?
July 27th, 2009 at 11:01 pm
Dear Joe Sixpack,
I would like to respond to your comments (Anonymous - please correct me if necessary).
First, nice alias. It is right up there with IP Therefore I Am from Infirmation.com.
Second, you hit the nail on the head. You get one opportunity to respond to a Notice of Non-Compliance and the stakes are often very high. It is better to at least be aware of the possible extra requirements to avoid these difficult situations where the Appeal Brief is technically compliant but the Examiner or Office has rejected it anyway. This way, you can (hopefully) avoid finding yourself in this situation. That is the suggestion of the post, nothing more.
September 1st, 2009 at 4:21 pm
I just recieved a non-compliant for not including a Table of Contents. I will be taking this as far as possible to get it withdrawn as this alleged “non-compliance” will adversely affect patent term extension if not properly corrected by the USPTO. If they would put more effort into actually analyzing the arguments and less time in analyzing the form of the brief, the backlog would drop significantly!
September 2nd, 2009 at 4:24 pm
I just spoke to the Examiner about the table of contents. He is withdrawing the non-comliance but is issuing a new non compliance becuase section 6 states “(6) Grounds oF Rejection” as the heading followed by the sentence “The current grounds of rejection to be considered in this appeal are the following:” because the heading itself does not state “Grounds of Rejection to be reviewed on Appeal,” even though MPEP 1205.03 epxressly states ” The examiner should not require a corrected brief for minor non-compliance in an appeal brief (e.g., the brief has a minor error in the title of a section heading).
October 27th, 2009 at 10:55 am
While the appeal will eventually have to be considered, the BPAI is concerned about pendency. A brief that is non-compliant isn’t considered to be pending, thereby shortening the reported pendency.
Michael (Kondoudis), thanks for your blog- always good reading.
October 27th, 2009 at 11:02 am
Brian Fletcher is correct- the linked appeal brief checklist is for new rules that have been suspended indefinitely. No-one in their right mind would use the new rules: they require additional sections, like the Statement of Facts, which are fertile grounds for charges of inequitable conduct. Additional formal requirements of the new rules include increasing the font-size to comical 14-point, while applying a 30-page limit.
In fact, those misguided souls filing briefs under the new rules were getting their briefs bounced as not complying with the current rules. The PTO eventually had to clarify in the federal register (73FR70282) that briefs under the new rules would also be compliant. Therefore, you should now be able to file a brief under the new rules, but why would you?
The PTO is still using (and sending out) the checklist from MPEP 1205.03 (page 1200-18). So Daniel, consider yourself lucky- status identifiers are specifically required on this checklist. Your technology center may have a smaller backlog and therefore a less picky appeal brief review process. You should probably update your practice before you do receive a legitimate non-compliance notice.
October 27th, 2009 at 11:44 am
My advice- under the current rules, pay VERY close attention to MPEP 1205.02. The order, numbering, and naming of sections are not suggestions- many appeal center “specialists” consider them to be requirements.
And don’t believe MPEP 1205.03 for a second- your brief WILL be help non-compliant for the most trivial of formalities (like omitting an empty evidence appendix).
October 27th, 2009 at 11:56 am
Joe Sixpack asked how you traverse non-compliance. A petition is a time-consuming and expensive option for your client. Most (all of mine) would rather have you fix the supposed informality than fight on principle. You can, however, contact the supervisor of the appeal center specialist (although finding who that supervisor is has not been easy). The supervisor is often able to actually read the MPEP to determine whether your brief is in compliance. They can then withdraw the notice of non-compliance.
mike- I wanted to mention that you can receive a series of non-compliant notices, especially if each one is essentially making up a new requirement. Our firm has gotten three notices in a row on one appeal, although I have heard that we haven’t set the record. As you noted, though, be careful- if you miss one of the actual requirements, then you could be in trouble.
December 7th, 2009 at 2:07 am
Is there an actual PTO format/guidelines for an amended appeal brief? There appears to be nothing in the MPEP on how an amended appeal brief is identified, whether an errata sheet is required,and whether a new date (filing date)is identified for the amended appeal brief. Does anyone have insights on how an amended appeal is to be specifically identified/formatted?
December 7th, 2009 at 2:37 pm
Talked to a PTO Assistance Center rep. on 7Dec09 for insights on presenting an amended brief. Was told to stay away from preparing/identifying any “errata sheet”, but provide a remarks sheet to clearly identify the specific changes made in the amended brief and the reasons for the changes; and to identify this remarks sheet in PTO Form 21. This seems to be very sound advice from the PTO’s Assistance Center rep. Any other thoughts out there?