by Dennis Crouch
Normally, a notice of appeal filed in federal appellate court does not include details on what particular issues are being appealed. That comes later in the appellant’s opening brief.
One exception is found in R. 44 of the Federal Rules of Appellate Procedure (FRAP). R. 44 requires notice of any Constitutional Challenge of a Federal or State statute. This must be provided “immediately upon the filing of the record or as soon as the question is raised in the court of appeals.” That constitutional challenge notice is then sent over to the US Attorney General (or respective state counterpart) who may want to intervene to defend the statute. Depending upon a few factors, the constitutional challenge notice may be due prior to the opening brief. This type of certification was provided in all the Arthrex-style challenges of PTAB appointments.
A second exception that is patent-law-specific is found in within the set of rules and regulations promulgated by the USPTO. 37 C.F.R. 90.2(a)(3)(ii). The rules require that the notice of appeal of any IPR, CBM, or Post-Grant Review “provide sufficient information to allow the Director to determine whether to exercise the right to intervene in the appeal pursuant to 35 U.S.C. 143, and it must be served as provided in § 42.6(e) of this title.” An example of this type of notice can be seen in the following notice of appeal. [ExampleNoticetoPTO].
My thought: It seems to me that the USPTO does not possess authority to require an applicant include certain elements within its notice of appeal. The contents of the notice of appeal are governed by statutory law along with the rules of appellate procedure and the Federal Circuit’s own local rules of procedure. None of those authorities require or suggest that the notice-of-appeal include the substantive elements required by the USPTO. The US Courts are generally in control of determining their own procedures, and the PTO has no authority to amend those procedures for its own convenience.
Does this matter? In general, this is a rather small point, and the PTO’s approach is a practical and efficient solution. The key issues though are timing and strategy. The PTO rule forces the appellant to figure out its appellate position 30-days early and also to disclose that position to the opposing party 30-days early.