New Patent Appeals Rules: Delayed by Whitehouse OMB

Patent applicants appealing examiner decisions do not need to comply with the USPTO’s new appeal brief rules that were set to become effective on December 10, 2008. According to the notice to be published tomorrow: The PTO “will notify the public when the revised effective and applicability dates are set. In the subsequent notification, the Office will provide at least a 30-day time period before the BPAI final rule 2008 becomes effective.”

http://www.federalregister.gov/OFRUpload/OFRData/2008-29297_PI.pdf

As noted previously on Patently-O. David Boundy of CantorFitz has led the charge against implementation of these new rules. Boundy notes the fact that Jon Dudas signed the FR notice on December 5, but as of this writing (Dec 9 at 5:23pm), there is still no notice on the USPTO website.

33 thoughts on “New Patent Appeals Rules: Delayed by Whitehouse OMB

  1. I know the limits of my competence. No thanks. I’m a lawyer, not a manager.

    (You might want to suggest to the new Undersecretary that he needs two competent lawyers as General Counsel and as Deputy Comm’r for Examination Policy. These two offices require lawyers with at least an elementary understanding of administrative law and respect for the rule of law. You know, the qualities absent from these offices since Toupin was appointed and Kunin left.)

  2. Hear, hear! Hooray for David Boundy!! David Boundy for Undersecretary of [whatever it is that Dudas is currently Undersecretary of], if he wants it.

  3. Ron, related to nothing, I travel back and forth along a street called Katznelson on my commute to work.

  4. Sorry Malcom,

    My comment was a bit obscure. Think of the adage, when a person know how to use a hammer, everything can be fixed with a hammer…

  5. “Being my own Lexiconographer, can I define my hammer as “screwdriver” and my nails as “screws”…”

    Yes.

    “Or do I run afoul of the BPAI Ex parte Miyazaki §112 indefiniteness rule?”

    I don’t see what’s indefinite about it, given your express definitions. Regardless, your hammer and nails are old and unpatentable.

  6. pd,

    I found the Statement of Facts illustration (page 32942 of the FR and Comment 45 at page 32960 of the FR). After reviewing the PTO response, this Statement of Facts section is nothing but exalting form over substance. For example, page 32492 says each statement should be a short declarative sentence addressing a single fact. What consitutes a “single fact” and why does it matter? Again, this Statement of Facts section exalts form completely over substance.

  7. The USPTO now has announced the delay in the appeal rules on its home page.

    It also states:

    “In the interim, the USPTO will continue to accept appeal briefs in either the current format, or the new format as outlined in the final rule.” It points to a link that contains the final rule not in effect but not to the current rule that IS IN EFECT.

    As I explained in my comment above, for the benefit of all patent applicants, practitioners should NOT file new appeals under the “final rule” because (a) it is most likely NOT the final rule and (b) it would create a biased “statistical” record that the USPTO may misuse to frustrate our future objective burden analysis. At a minimum, it is highly likely that OMB review would result in USPTO submission of a “corrected” ICR. When we next engage on a “corrected” ICR, we will have to repeat critical analytical work that went into our prior comments (see references to such analysis in Section 2 of my comments at link to patentbaristas.com ).. The last thing we need is to contend with “informal surveys” that the USPTO may provide based on a biased population of briefs filed under the new rules.

  8. You need to review David Boundy’s hundreds of pages of beautifully written and researched submissions and comments regarding the BPAI rules and continuation rules to fully appreciate how much time and effort he and his staff have donated to thwarting Dudas’ procedural inanities and to protecting the substantive rights of applicants.

    I don’t know the guy, never met him, and have only exchanged a couple Em’s with him, so I don’t have a personal basis for a bias here, but IMHO this guy is an unsung hero of the IP field.

    Most of the rest of us just sit around blistering our fingertips on blog posts and comments. Thank goodness a few have the wherewithal and chutzpa to actually stand up and say what needs to be said.

    This guy, Boundy, would make a marvelous Director.

  9. Being my own Lexiconographer, can I define my hammer as “screwdriver” and my nails as “screws”…

    Or do I run afoul of the BPAI Ex parte Miyazaki §112 indefiniteness rule?

  10. “The example looks a heck of a lot like the arguments I would have presented in a 2004-style Appeal Brief, or for that matter the arguments that I make in every Response …

    Leaving me to wonder, what goes in the “Argument” section? (Since pretty much every argument for patentability turns on demonstrating the factual errors on which the rejections are founded).”

    pd,

    What you point out here is exactly the “disconnect” that will happen in separating the “facts” from the “argument” in an appeal brief filed before the BPAI. The new rules on the appeal brief try to create a court-style appellate brief which doesn’t fit very well with the need to point out the “errors” in the Examiner’s rejection(s).

  11. “There is, actually, a comment and response providing an example Statement of five “facts”.”

    pd,

    Thanks for the clarification. Can you point to the Comment number or page of the Federal Register where this appears?

  12. EG wrote: ” the provision that most puzzled me is the requirement in appeal brief for a Statement of Facts section ”

    There is, actually, a comment and response providing an example Statement of five “facts”.

    The example looks a heck of a lot like the arguments I would have presented in a 2004-style Appeal Brief, or for that matter the arguments that I make in every Response …

    Leaving me to wonder, what goes in the “Argument” section? (Since pretty much every argument for patentability turns on demonstrating the factual errors on which the rejections are founded).

  13. I just may go to church this weekend and pray to the gods. But something needs to be sacrificed on the alter! Hmmmm

  14. Beware: I filed an appeal brief that complied with the new rules. It was not accepted, allegedly because because a brief under the new rules cannot comply with the old rules . . .

  15. Besides the page limit, font size, discouraging footnotes, etc., problems, the provision that most puzzled me is the requirement in appeal brief for a Statement of Facts section. Exactly what “facts” are supposed to go in this section? The rules and comments in response to the rules provide no examples of what such a section might look like, or what “facts” should go there. And separating the “facts” from the Argument section doesn’t make it easy for the appeal brief to coherently explain what “errors” were made by the Examiner.

    This Statement of Facts section requirement may be for the benefit of how the BPAI currently writes its decisions. One person has suggested that the Statement of Facts/Arguments in the appeal brief would mirror the current BPAI decision format which has a Findings of Fact section (corresponding to the Statement of Facts section) and Analysis section (corresponding to the Arguments section). And as this person correctly observed, that’s one reason why current BPAI decisions appear so disjointed.

  16. any appeals rules that go beyond the federal circuit rules… are a further uspto joke.

    not just the 14 point font, but also the page requirements.

    how can the applicant be expected to define the issues for the BPAI… in less space than allowed by the federal circuit – this hamstrings the applicant’s argument at the federal circuit, even before the case inevitably gets there. can you say substantive?

    the dismissal of this appeals package is just more evidence of the winds of change at the uspto – nobody is willing to stick their necks out and argue for this crap, anymore.

  17. Ah, it warms my little heart to see the PTO’s insane rule package designed to discourage applicants from filing appeals go down in flames.

    I hope to god that the next PTO administration is a good one. The current administration is turning out a drove of E6k’s. That is NOT what we need.

  18. RK wrote: “It is important that practitioners not follow USPTO’s invitation to use the new rules’ option when filing an appeal and that they make clear in their transmittal that the appeal is filed under the 2004 rules. [the good reasons deleted]”

    Excellent point. Bears repeating.

    Puts the offer to “file with the new rules if you want” offer in an entirely new light.

    6, I can’t imagine you guys can keep a good attitude when your upper-level management is doing so much to undermine you and our shared goal (rapid allowance of the truly novel/nonobvious, rejection of the rest).

  19. Hats off to: Tafas, Glaxo, Boundy, Katznelson, John Desmarais and all the many others too numerous to mention who have successfully fought to keep the USPTO at bay. Apparently Mr. Dudas and Mr. Doll had thought that they could do whatever they wanted since they took office and IGNORE the comments and concerns of the patent bar. Reform is needed, but all parties involved in our patent system need to participate and be heard.

    I remember the good old days when people actually used to speak highly of the PTO leadership (gasp). I remember hearing nothing but positive things about Q. Todd. Hopefully, when Obama puts in his new people, they will learn from the current string of failed rule packages and try to cooperate with the patent bar/applicants for a change.

  20. “Even to this lowly pro se, they are clearly substantive, and beyond the legal authority of the PTO to promulgate.”

    They’re substantive guys! Hear that? File for injunctive relied NAO!

  21. PTO’s November clarification of the BPAI rules was reminiscent of Peterlin’s earlier clarification of the new application dates of the continuation rules once the injunction is reversed. I wonder if anyone really filed a brief prematurely compliant with the new BPAI rules.

  22. A big thank you to all you professionals who have been fighting these illegal and unfounded changes.

    Even to this lowly pro se, they are clearly substantive, and beyond the legal authority of the PTO to promulgate.

    Limit the length of briefs? No different than the illegal attempt to limit the number and content of continuations.

    For any professionals willing to file a lawsuit to stop this foolishness should the need arise, this is one pro se ready to join you.

    Just let me know.

  23. Many of the comments during the last 30 days that led to OMB’s delay in decision are now posted on link to patentbaristas.com. These are references to comments submitted to OMB which are yet to be posted on OMB’s web site. When you read our comments as specifically directed to OMB, you will appreciate that given USPTO’s conduct, OMB did not have much choice.

    The “delay in OMB review” outcome we see today is consistent with OMB’s disapproval of the ICR as it was submitted. OMB simply gave the USPTO a face-saving option of delaying the rules on its own so that OMB would not have to be on record as publicly disapproving the ICR at this time.

    This outcome was probably predicted by USPTO on November 20th when it issued its Federal Register notice “clarification” on the “applicability” of both rules. In this “clarification”, the USPTO is essentially inviting parties to submit appeals under the new rules, even though these rules are not in effect. See link to uspto.gov. The December 10 FR notice repeats the “clarification” of November 20th and directs applicants to its new appeal rules FAQ.

    It is important that practitioners not follow USPTO’s invitation to use the new rules’ option when filing an appeal and that they make clear in their transmittal that the appeal is filed under the 2004 rules. Because the public record on the extent of paperwork burdens imposed by the new appeal rules is incomplete, this is important for three reasons:

    (a) The USPTO will likely use the fact that some filings are made under the new rules to later argue that the public does not really care much which rules are used – thereby making a false point about lack of incremental burdens.

    (b) It is also clear that appeal cases that would be most negatively impacted by the new rules would naturally be filed under the old rules and therefore the voluntary filings under the new rules would be heavily biased towards the simple and short cases. The USPTO will most likely use their “junk science” methods to characterize the ensemble of appeals filed under the new rules based on this voluntary highly biased population. This will enable the USPTO to falsely characterize all appeals if filed under the new rules.

    (c) It is unlikely that the new appeal rules will survive proper OMB PRA review. As numerous comments show, certain features of the new rules would have to be withdrawn or modified substantially. Therefore, practitioners’ “learning curve benefits” from attempting to follow rules that may never survive are doubtfull at best.

    My recommendations above would not have been made had I not experienced the clearly intentional USPTO deviations from procedures of law and its attempts to use “junk science” to support its rulemaking actions in the last two years. Appellants should therefore ignore USPTO’s new appeal rules and use only the rules that are currently in effect – the 2004 rules, the rules they are familiar with.

    Ron Katznelson

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