BPAI Revised Procedure for Appeal Brief Review

As part of the PTO’s efforts to streamline appeal practice, the office has (internally) announced a new procedure for reviewing appeal brief formalities. Notably, the BPAI has been given the “sole responsibility” for determining whether appeal briefs are in compliance with the formalities required by 37 CFR 41.37. The USPTO has also indicated briefs will be accepted even if they contain “minor informalities” so long as those informalities do not affect the BPAI’s decisionmaking ability.

The BPAI will review each opening brief before forwarding the brief to the examiner for consideration. Once the brief is accepted by the BPAI, neither the examiner nor the Patent Appeal Center will have any power to later reject the brief as non-compliant. The non-compliance form paragraphs are also being removed from the examiner’s OACS computing system.

In a 2007 study of the prosecution files of 720 cases on appeal, I found that a full 25% had been rejected as ‘defective’ based on formalities. [Link]. A major purpose behind this power-shift is to reduce this paperwork churning and to create more uniformity in appeal processing. This shift also allows the BPAI to collect better data on the number and types of appeals being filed.

The announcement is signed by Bob Bahr, Associate Patent Commissioner (for patent examination policy).

File Attachment: bpai_revised_procedure_20100329.pdf (217 KB)

* * * *

The chart below shows the backlog of ex party BPAI appeals (excluding reexaminations).  These only include cases where appellate briefing has been completed and jurisdiction transferred from the Examiner/TC to the BPAI.

PatentLawPic959

The BPAI will be holding a roundtable on April 7.

27 thoughts on “BPAI Revised Procedure for Appeal Brief Review

  1. anon,

    Your translation is false. Many, including myself, cry out for examination to be done properly with the tools at hand, without resorting to rubber stamping in the opposite direction of “reject-reject-reject”.

    Search this site for “accept-accept-accept” and you will see-see-see.

  2. “If Examiner’s did their job correctly in the first place, e.g. apply the law properly in accordance with the MPEP, the appeals would not be piling up.”

    Translation: If the PTO just allowed everything, then there would be no backlog of appeals. Allow everything, problem solved.

  3. If Examiner’s did their job correctly in the first place, e.g. apply the law properly in accordance with the MPEP, the appeals would not be piling up.

    1. Do a good search (this does not mean punch in the claims terms and take the top 3 “hits” and fart out a half baked office action). You have to actually take a little time to read, or at least scan the references for relevance.

    2. Check the application/claims for formalities (objections to informalities, 112 rejections, etc.)

    3. Notwithstanding 2., carefully apply the reference against the claims, which should be carefully construed in light of the specification according to the broadest reasonable interpretation.

    4. On a second action, actually ANSWER the applicant’s remarks (see MPEP 707.07(f)).

    5. If you have developed a good issue and believe in yourself (that you could win an appeal), go final and stick to your guns. If not, either issue a new non-final action or allow the case.

    It ain’t rocket science.

  4. 7, I too keep wondering how our Dear Leader came up with an obviously efficiency based, business minded, problem solver like Kappos. It’s so contrary to everything else. Still, good on Kappos for making the effort to understand the situation, identify the problems, and JUST FIX THE PROBLEMS, and to the Dear One for appointing him.

  5. …or maybe we can hire three really smart people who can figure out why the number of appeals have been piling up and attack the root cause.

    …nah, let’s entrench the problem with more fake judges. We’ve got plenty of black cloth and law to make out of whole cloth.

  6. anon writes: “Next step should be doubling the size of the Board to keep up with the numbers of appeals that have been piling up.”

    I agree!

  7. I agree with you, Jam. Kappos is actually trying to do a good job, not merely produce numbers he can claim are good (i.e. Dudesass). Quite possibly the only good decision Our Most Divine Savior Comrade Obama has made :o

  8. “This looks good on paper, but the culture of pettiness runs deep. Who’s to say that the lack of a proper heading does not affect the BPAI’s decisionmaking ability? I’d like to be hopeful…”

    I unfortunately agree with you that the Board can at times be quite rediculous. However, most of us seems to agree that Kappos is well on the way to working wonders. I’m so glad he took over the helm.

  9. Znutar,

    good point – that begs the question, what actually runs the decisionmaking ability of the BPAI?

    I was at the crib, sittin’ by the fireplace
    Drinkin’ cocoa on the bear skin rug
    The door bell rang. Who could it be?
    Thought to myself then started to shrug
    Got to the door. Ding Dong. Who is it?

    Makes me wonder about the whole quasi-judicial-yet-legislative-branch-who’s-the-boss-separation-of-powers thingie going on. Sure, we call them “judges”, but they are not “real” judges, are they? If they are judges, shouldn’t they be in fact separated from the influence of the legislative body (who, in fact are their bosses)? – at least in the whole decisionmaking influence area?

  10. This looks good on paper, but the culture of pettiness runs deep. Who’s to say that the lack of a proper heading does not affect the BPAI’s decisionmaking ability? I’d like to be hopeful…

  11. Will this be extended to general prosecution in the cases where the only single period in a claim is missing at the end of the claim?

  12. I also had an Appeal Brief bounced for leaving out the status of cancelled claims, but that was my fault. OTOH, I’ve had multiple bounces for missing appendices that were not missing but were there all the time, which is defnitely the PTO’s fault, and several for not writing in so many words that empty appendices were empty, just leaving them blank except for the heading, which I’m pretty sure should have been OK under the rules. These problems should go away now.

    Three cheers for Kappos!!! Hip! Hip! Hurray!

  13. This is a good start. Next step should be doubling the size of the Board to keep up with the numbers of appeals that have been piling up.

  14. Excellent move. Man I love Kappos. I’ve been bounced for the most ridiculous things.

    Here’s just a few:

    1. In my grounds of rejection to be reviewed on appeal section, saying: Claims 1-20 were rejected as being anticipated by X, instead of Claims 1-20 were rejected under 35 USC 102 as being anticipated by X.

    Really? The Examiner and the Board didn’t know I was talking about a 102 there? Yeah right.

    2. In my summary of the claimed subject matter section, I was once bounced for cutting and pasting the figures in (made it easy to see which pieces i was talking about, i thought making the examiner and board’s lives easier).

    3. Another time, in my summary of the claimed subject matter section, I was bounced for NOT cutting and pasting in the drawing figures.

    lol wut? Bounced for doing it one time, bounced for NOT doing it another time? yay for inconsistency.

    4. I was once bounced for failing to mention that claims 25-30 were canceled in my status of the claims section.

    ok that was my bad, but really? they couldn’t have figured that one out quickly?

    I could go on and on. I am quite happy that this gigantic waste of time is apparently over with.

  15. wipes will institute whatever helps THEM have an easier time and then say it is to help us. If it coincides with the latest push, they will take credit for that too.

  16. Did you know that if you take this graph on ex party BPAI appeals and flip the allowance rate graph upside down, you have the same curve?

  17. From the practitioner’s perspective, this is typically a desirable outcome for an appeal.

    Sure it is – you get to soak the client some more. Now the client’s perspective is probably more along the lines of the examiner had his best shot and missed, give me my patent.

  18. Windy City says: “Now just set up a penalty to Examiners who reopen prosecution after an appeal brief is filed to use new references to reject all of the claims…”

    From the practitioner’s perspective, this is typically a desirable outcome for an appeal. If there is good art out there, a practitioner should want the examiner to find it and give reasonable rejections, since allowance of ultimately invalid claims is undesirable. To have to wait two years for the board to tell the examiner that his rejections are bogus and for the examiner to then come up with new ones based on entirely different art is much less preferred over having the examiner take the initiative. When the examiner is persuaded by the appeal brief (and the threat of having to counter it before the board), that’s a good thing.

    What’s not good is when an examiner yanks a case from repeal, repeatedly, and continues to base the rejections on the same art. That’s what deserves some kind of penalty. Let the rejections receive a fair hearing and don’t just play a stall game.

  19. unproductive government pettyfoggery for statistical gameplaying

    What next, the government will define “quality” in a meaningful way?

  20. I’m all for playing by even the strictest rules, but I hated the strictness changing based on whether or not the Examiner had time to write an Answer.

    Indeed. It’s the inconsistency that bugs most.

  21. Thank you, Mr. Kappos. Now just set up a penalty to Examiners who reopen prosecution after an appeal brief is filed to use new references to reject all of the claims, and life will be good.

  22. “The USPTO has also indicated briefs will be accepted even if they contain “minor informalities” so long as those informalities do not affect the BPAI’s decisionmaking ability.”
    Wow, rarely has unproductive government pettyfoggery for statistical gameplaying been so quickly addressed by new PTO management. This must be the hand of Dave Kappos.

  23. This is awesome news.

    I was getting so tired of being on the losing end of the production deadline/bounce game. I’ll bet at least a dozen times I’ve had a brief bounced as non-compliant exactly two months after it was forwarded to the examiner, and the non-complying element was typically either negligible or fabricated. I’m all for playing by even the strictest rules, but I hated the strictness changing based on whether or not the Examiner had time to write an Answer.

Comments are closed.