Formalities Review of BPAI Briefs

Director Kappos writes the following:

I thought I would let you know about a new streamlined procedure we have instituted for review of briefs filed in ex parte appeals in patent applications. Under the new procedure, the Chief Judge of the Board of Patent Appeals and Interferences (BPAI) will have the sole responsibility for determining whether appeal briefs comply with the formality requirements governing the content of these briefs. This new procedure eliminates two layers of review; previously the Patent Appeal Center and the examiner were required to review patent appeal briefs and evaluate their compliance with the formality requirements.

Under the streamlined procedure, only the Chief Judge and his staff will conduct a compliance review of appeal briefs, and will do so at the time the appeal brief is filed. If a brief is determined not to comply with the applicable regulations, the Chief Judge will promptly send the appellant a notice and provide a time period within which an appellant can file a corrected brief. The Chief Judge will also have the sole responsibility for determining whether corrected briefs comply with the applicable regulations and addressing any inquiries and petitions regarding notices of noncompliant briefs. Because this change affects only the internal process within the USPTO, applicants should continue to follow all procedures set forth in the regulations.

We expect this new procedure to reduce appeal pendency from the filing of a notice of appeal to the docketing of the appeal. We expect a further reduction in pendency because the streamlined procedure will increase the consistency of the review, and thereby reduce the number of notices of noncompliant appeal brief and non-substantive returns from the BPAI that require appellants to file corrected appeal briefs.

Additional details about this new procedure are outlined in a Federal Register notice publishing presently. As always, comments are welcome. In fact, this entire change is the product of IP community comments. Thanks for keeping them coming!

28 thoughts on “Formalities Review of BPAI Briefs

  1. So to avoid problems with status identifiers, practitioners could perhaps use only approved identifiers? Why are you using identifiers that are not listed?

    If human errors do happen, perhaps examiners could call the practitioner to map the unapproved identifier to one of the approved identifiers? Why are you wasting time and money over something that could be resolved in a 2 minute phone call?

    It seems to be a small problem that becomes a pissing match because both sides can’t come to terms.

    Keep in mind that the PTO doesn’t like noncompliant amendments either. They amended the MPEP with more status identifiers and gave examiners authority to accept even more alternative identifiers: /media/docs/2005/06/noncompliantOG-060105.pdf

    I also heard talk about not mailing notices of noncompliant amendment after the examiner has a month to consider the amendment. Examiners can’t use these notices to avoid workflow demerits any more and must review all amendments as early as possible.

    Any response re: REJECTIONs of noncompliant amendments? I’d like to know what the ground of rejecton would be.

  2. an examiner could use personal judgement/coin flip/personal feelings towards the applicant/planetary alignment/etc. to decide and would still be in compliance with the MPEP.

    Yes, but we must have everything in writing and that damm paper trial gets to be a bloody nuisance come court time.

  3. The way the MPEP is drafted, an examiner could use personal judgement/coin flip/personal feelings towards the applicant/planetary alignment/etc. to decide and would still be in compliance with the MPEP.

    So if the particular decides to exercise discretionary authority granted by the MPEP, who should we fault, OPLA or the examiner?

  4. MPEP 714(E):
    “(E) Acceptable Alternative Status Identifiers: To prevent delays in prosecution, the Office will waive certain provisions of 37 CFR 1.121 and accept alternative status identifiers not specifically set forth in 37 CFR 1.121(c).”

    “The Office may also accept additional variations of the status identifiers provided in 37 CFR 1.121(c) not listed above if an Office personnel determines that the status of the claims is accurate and clear.”

    It appears that the MPEP leaves discretionary authority to the PTO to determine what status identifier would be appropriate if none of the approved ones were used.

    So even if I could show that an unapproved status identifier were “accurate and clear”, the PTO can still point to the “may” and thumb their nose.

    Perhaps we should amend the MPEP to state “shall” instead :-)

  5. “rejection for formalities adds to pendency. If an amendment says “Claim 1 (amended)”,rather than “Claim 1 (currently amended)”, we get a rejection of the amendment”

    Pardon my ignorance, but do you get a REJECTION of the amendment? What is the ground of rejection then if that were the case?

  6. To in-house,

    I believe the statement under 37(c)(ii) is different from the Listing of Claims… and should appear in the body of the brief.

  7. Let’s see whether the Chief APJ limits enforcement to the 2004 written rules, and only the 2004 written rules, as ordered by the Executive Office of the President

    link to reginfo.gov

    or whether the PTO continues to enforce the withdrawn 2008 Appeal rules.

    Today’s 37 CFR § 41.37 requires “mapping” claim limitations only for means-plus-function limitations (and the limitations that are material to the appeal), not for all limitations. Indeed, the Paperwork Reduction Act forbids the PTO from requiring “mapping” of claim limitations that have no “practical utility” to the appeal.

    Let’s see what happens.

  8. o.k. see 37 CFR 41.37(c)(iii) Status of Claims. A statement of the status of all the claims in the application, or patent under reexamination, i.e., for each claim in the case, appellant must state whether it is cancelled, allowed >or confirmed< , rejected, >withdrawn, objected to,< etc. Each claim on appeal must be identified.

    Now see. CFR 1.121 (c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).

    I have seen appeals brief dinged because the first reviewers reject the claim identifiers becuase they didn’t say “currently amended” 121(c), when they were PROPERLY listed as “rejected” 37(c)(ii).

    This is the kind of nonsense this change should eliminate.

  9. “Ken,
    So it is better to just add one to the smaller list of claim one? And hope the examiner takes that application in first? And if it works then the second independent claim won’t be necessary? And will be dropped?”

    Are you asking whether it’s better to have just one independent claim and a bunch of dependent claims, instead of two independent claims, each with their own dependent claims?

    In most electrical / mechanical cases, it’s best to have at least two independent claims, because you want an independent device claim and an independent method claim.

    It seems you’re trying to write your own application. Horrible idea. Not trying to be mean, just honest.

  10. Kappos has done a huge service to the appeals process by taking appeal brief compliance out of the hands of the examining corps and putting it where it belonged in the first place, the Board. I was always bothered by the fact that the party adverse to appellant also had control over whether or not the appeal brief complied.

  11. Examiners do not abuse any processes.

    Just ask IANAE, he know the truth.

    There is no such thing as “wearing the applicant down.”

    We got the quo – so who cares? It’s called “maximizing the support of the country by giving the USPTO as much money as you can afford”.

    Geez, ya think ya could be a little less self-centered, don’cha?

  12. “Is it really that difficult to follow the rules when submitting an Appeal Brief? I hope not.”

    No, it’s not that hard. But the problem was that there was no oversight (or petition) for when an examiner was abusing the “Non-Compliant Brief” process to keep the Appeal from the Board, and/or wear the applicant down.

    I’m really glad to see this.

  13. Is it really that difficult to follow the rules when submitting an Appeal Brief? I hope not.

    “only the Chief Judge and his staff will conduct a compliance review of appeal briefs”

    I wonder who the Chief Judge’s “staff” is?

  14. Now I get the Rule 714. Changing something in a claim of the application doesn’t keep you from adding to the application later.
    And it can be previous matter emntioned in the application.

  15. Ken,
    So it is better to just add one to the smaller list of claim one? And hope the examiner takes that application in first? And if it works then the second independent claim won’t be necessary? And will be dropped?

  16. “Never mind that the document examiner can easily see the underlinings and strikethroughs in Claim 1 and therefore know that there is “current” amending.”

    Lets blame the MPEP instead of the Examiner. MPEP 714 C (A) says, “Status is indicated in a parenthetical expression following the claim number by one of the following status identifiers: (original), (currently amended), (previously presented), (canceled), (withdrawn), (new), or (not entered).” and Further MPEP 714 E listss, “Acceptable Alternative Status Identifiers” of which your ‘amended’ is not one of them.

    The last thing I want to do is encourage the Examiners to choose which sections of the MPEP they would like to follow and which they would not like to follow.

  17. I also have another idea I haven’t tested yet. I don’t know which one will work better. Because of the two, each has some merit. Applications are expensive. And I can’t seem to get any legal help with my applications. So I guess I will just have to do them as they come. One then the other. And if the first elastic band is suitable the other I can forget about it.

  18. I have just invented a new elastic band. The only problem is when I test it, I feel like I have been stretched too.

  19. “…..and when there was a bad man “at the head”? Paul, does that have an equally large negative effect?”

    Yes. It does. Kappos still isn’t close to undoing the damage that Dudas did.

  20. Yes, overly zealous rejection for formalities adds to pendency. If an amendment says “Claim 1 (amended)”,rather than “Claim 1 (currently amended)”, we get a rejection of the amendment and must resubmit. Never mind that the document examiner can easily see the underlinings and strikethroughs in Claim 1 and therefore know that there is “current” amending. Makes you wonder how much pendency can be cut by common sense examination rather than playing “gotcha” with formalities.

  21. …..and when there was a bad man “at the head”? Paul, does that have an equally large negative effect?

    With juggernaut Patent Office organisations one would think that the power of a bad man to do damage over a single term of office is quite limited. Conversely, when it comes to Heads of State, the power of a bad man to do damage to the reputation of a country is greater than that of a good man to heal such damage.

  22. A good man at the head of an organization can make a huge difference to the whole functioning of that organization. Res ipsa loquitur, as lawyers say.

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