New Patent Office Appeals Rules 37 CFR Part 41

1. New Patent Office Appeals Rules37 CFR Part 41

2. Overview • PTO Justifications for Rules • Introduction to Rules • Options and Timing • Specific Changes • Recommendations

3. PTO Justifications for Rules • Permit the Board to handle an increasing number of appeals in a timely manner. • However, had a higher backlog in the recent past & new CON/Claim rules were not implemented. • Appellant needs to be clear and concise as to where Examiner erred. • Rules are more objective. • Consistent Appellant briefing. • However, this proposition is highly questionable. • Improve uniform enforcement. • Certain petitions now decided by Chief Administrative Patent Judge.

4. Introduction to Rules • Effective Date = December 10, 2008 • Applies to all appeals in which an Appeal Brief is filed on or after the effective date.

5. Introduction to Rules • (Still) Entitled to Appeal if: • Applicant whose claims have been rejected twice. • Owner of patent under ex parte reexamination whose claims have been finally rejected. • Ex parte reexamination filed on or after November 29, 1999. • More two month deadlines for Applicant. • With fewer automatic extensions of time.

6. Options and Timing Deadline Extensions of Time Final OA 3 Months from Mailing §1.134 + 3 Months with Extensions §1.136 Notice of Appeal 2 Months from Filing Notice of Appeal § 41.37(c) + 5 Months with Extensions § 1.136(a) Pre-Appeal Brief Conference Appeal Brief Within time established by the Director § 41.39 Note that different extensions of time apply to ex parte reexaminationproceedings. Examiner’s Answer

7. Options and Timing Examiner’s Answer 2 Months from Mailing §41.41(b) 2 Months from Mailing § 41.47(c) Req. for Extension § 41.3 *** Req. for Extension § 41.3 *** Request for Oral Hearing Reply Brief Must confirm attendance. § 41.47(f) Examiner’s Response to Reply Brief Hearing *** = Petition made to Chief Administrative Patent Judge Request not likely granted. Board Decision Supplemental Reply Brief

8. Options and Timing Possible Actions After Board Decision Board Decision If Board decides to … Remand and the Examiner enters an Examiner’s Answer Affirm/Reverse 2 Months from Mailing § 41.52(b) Req. for Extension § 41.3 2 Months from Mailing § 41.50(b) Req. for Extension § 41.3 Then you can … Req. for Rehearing Req. to Reopen Prosecution Req. to Re-Docket the Appeal

9. Options and Timing Possible Actions After Board Decision Board Decision If Board decides to … Decision may include a Recommendation of how a claim on appeal can be amended to overcome rejection. New Ground for Rejection Request for Briefing and Information Comply with Order 2 Months from Mailing §41.50(d) No Extensions § 41.50(g) Req. for Extension § 41.3 Then Applicant can … Respond to the Order Req. to Reopen Prosecution Req. for Rehearing

10. Options and Timing Possible Actions After Board Decision Board Decision Director May Extend (Good cause OR excusable neglect) § 1.304(a)(3) 2 Months from Mailing §1.304(a)(1)* Civil Action under 35 U.S.C. §§ 145, 146, 306 Appeal to Fed. Cir. Court of Appeals File CON/RCE * = If a Req. for Rehearing is filed under § 41.52, time for filing is 2 months from action on that request.

11. Primary Changes • Brief Formatting Requirements • Requirements of Appeal Brief • No New Rejection Grounds in Examiner’s Answer • Requirements of Reply Brief • Elimination of Examiner’s Reply Brief • Requirements for Req. for Rehearing • Petitions to Exceed Page Limit • Petitions for Extension of Time • Oral Hearing Requirements • Sanctions

12. Notice of Appeal • No Significant Changes • Signature Now Required on Notice of Appeal

13. Pre-Appeal Brief Conference • New Rules Did Not Change (and still encourages) Pre-Appeal Brief Review Pilot Program • Allows to address “bad” final Office Actions without the need to prepare a full appeal brief • Panel of Examiners (including the Examiner for the case) will reconsider grounds for rejection. • Must file request with Notice of Appeal and cannot file with Appeal Brief. • Proper Grounds to Use Program • Clear errors in fact or law in the examiner's rejections; or • The examiner's omissions of one or more essential elements needed for a prima facie rejection. • Improper Grounds to Use Program- Use Appeal Brief • Claim interpretation issues • Filing Requirements • Notice of Appeal along with any EOTs • Pre-Appeal Brief Request for Review Form PTO/SB/33 • Arguments- 5 pages or less • DO NOT file an Appeal Brief with Request- will remove from program • Decision from Panel • Appeal process continues- 1 issue remains for appeal • Application allowed • Prosecution Reopened • Request denied (improper) • Time period for filing an appeal brief will be reset to later of: • One-month from mailing of the decision on the request, or • Two-month time period running from the receipt of the Notice of Appeal.

14. Brief Formatting • Font • 14 Point Font – No exceptions (not even footnotes or page numbers) • Line Spacing • Double Spacing, but block quotes are allowed 1 ½ spacing. • Line Numbering • Strongly encouraged, but not required (do it anyway). • Page • Every page including the appendix needs to be numbered with an Arabic numeral • Page limits, but only certain sections count. • Attorney Signature Block • Correspondence address • Telephone number • Fax number (new) • E-mail address (new)

15. Petitions to Exceed Page Limits • Petitions are to be made under § 41.3. • Not automatic. • Considered by Chief Administrative Patent Judge. • Applicable to: • Appeal Brief • Reply Brief • Request for Rehearing • Currently, the requisite fee is $400. • Again, Petition must be made before the filing is due.

16. Petitions for Extension of Time • Petitions to be made under § 41.3. • Not automatic. • Considered by Chief Administrative Patent Judge. • Applicable to the filing of: • Reply Brief • Request for Oral Hearing • Request for Rehearing • Currently, the requisite fee is $400. • Fee was $200 for petitions under § 1.136.

17. Jurisdiction Over Appeal – § 41.35 • Board acquired jurisdiction when the Board mails a docket notice. • In practice, jurisdiction transfers only after: • Appellant has filed an Appeal Brief; • The Examiner’s Answer has been mailed; and • Appellant has filed a Reply Brief OR time for filing the Reply Brief has expired. • Jurisdiction of the Board ends when: • Board mails a remand order; • Board mails a final decision and judicial review is sought or time for seeking judicial review has expired; • An express abandonment has been filed; OR • An RCE has been filed. • Therefore, Appellant should notify the Board immediately if express abandonment or RCE has been filed. • If notification is received after remand order or final decision mailed, then remand order or final decision will not be removed from the file.

18. Non-Appealable Issues – § 41.31(e) • Non-appealable issues are issues in which the Board does not exercise authority and which are handled by petition. • Non-appealable issues include the Examiner’s refusal to: • Enter a response to Final Rejection • Enter evidence presented after Final Rejection • Enter an Appeal Brief or Reply Brief • Withdraw a restriction requirement • Non-appealable issues are to be decided by Chief Administrative Patent Judge include: • Petition to exceed page limits. • Petition to exceed time for filing a paper in the appeal. • Failure to timely file petition related to non-appealable issue constitutes a waiver to have the issue considered.

19. Appeal Briefs • New content requirements – § 41.37(e) • Sections now required • Statement of the real party in interest • Statement of related cases • Jurisdictional statement (new) • Table of contents (new) • Table of authorities (new) • Status of amendments • Grounds of rejection to be reviewed • Statement of facts (new) • Argument • Appendix • Within the Appendix, content includes: • Claims section • Claim support and drawing analysis (new) • Means or step plus function analysis (new) • Evidence • Related cases • Note: Some of the same sections are required in the Reply Brief

20. Real Party of Interest • Since a real party in interest can change during the pendency of an appeal, there is a continuing obligation to update the real party in interest during the pendency of the appeal. • If an appeal brief does not contain a statement of real party in interest, the Office will assume that the named inventors are the real party in interest. • Example: • The real party in interest in this appeal is ABC Co., which is the owner of the present application by written assignment recorded at reel/frame number 100/999.

21. Statement of Related Cases • The statement of related cases would identify related cases by (1) application number, patent number, appeal number or interference number or (2) court docket number. • A related case includes any continuing application of the application on appeal. • Breadth of “known” cases has been narrowed. • Now limited to “known to any inventors, any attorneys or agents who prepared or prosecuted the application on appeal and any other person who was substantively involved in the preparation or prosecution of the application on appeal.” • If no statement of related cases is made, the Office will assume that there are no related cases.

22. Jurisdictional Statement • Jurisdiction statement should include: • Statute under which the appeal is taken. • Date of the decision from which the appeal is taken • Date the notice of appeal was filed • Date the appeal brief is being filed • Added so that the attorney will double-check to make sure that the Appeal is timely filed (the case is not abandoned).

23. Table of Contents • Identifies the sections and page numbers on which the section begins. • Note: It does not need to list the preceding sections (i.e., Statement of Real Party in Interest, Statement of Related Cases & Jurisdictional Statement)

24. Table of Authorities • Table of authorities should include: • Court and administrative decisions • alphabetically arranged • Statutes • Other authorities appearing in the Brief. • A reference to the pages of the appeal brief where each authority is cited is also to be provided. • Citation to Authorities within Brief- no parallel cites required (only a single citation). • Rule 41.12 provides source priority (e.g., Federal Reporter trumps USPQ)

25. Status of Amendments • Statement concerning the status of all amendments filed after final rejection. • Regardless of whether the amendment was entered or not. • Informs the Board of whether an amendment was entered. • Example language: • An amendment after the final rejection was submitted on January 1, 2008 in which claims were amended. In the February 1, 2008 Advisory Action, the amendment was denied entry.

26. Grounds of Rejection to be Reviewed • Appellant must set forth the grounds of rejection to be reviewed, including the claims subject to each rejection. • You do not need to list the grounds you are not challenging, but be careful, if grounds not challenged in Appeal Brief, they cannot be raised later in appeal. • For example: • Rejection of claim 2 as being anticipated under 35 U.S.C. 102(b) over Johnson. • Rejection of claims 2–3 as being unpatentable under 35 U.S.C. 103(a) over Johnson and Young.

27. Statement of Facts • In the Statement of Facts, Appellant is to set out the material facts relevant to the rejections on appeal, preferably in numbered paragraphs. • Facts are to be presented in an objective and non-argumentative manner. • Support for Facts Required • Application: refer to page and line (or paragraph no.), and where appropriate, drawing no. and element no. • Patent: refer to column and line and where appropriate, drawing no. and element no. • Affidavit: refer to page and line no. (or page and paragraph no.)- need affidavit enclosed in Evidence Section of Appendix. • Each fact is to be set out in short declarative sentences, and each sentence should address a single fact. • For example: • Fact 1. The examiner found that Jones (the reference) describes a battery (col. 2, lines 4–9). • Fact 2. Applicant disagrees.

28. Argument • Explain why Examiner erred for each ground of rejection reviewed. • Each rejection is to be argued separately under a separate heading. • Must identify what is an old or a new argument • Old Argument- must identify where the argument was first made to the Examiner • New Argument- must say that the argument is new. • Grouping Patentability Arguments (“Claims Standing or Falling Together”) • Unless an appellant plans to argue the separate patentability of a claim, the appellant should not discuss or refer to the claim in the argument section of the appeal brief • Example: (1) ‘‘With respect to the rejection under § 102, claims 1–3 stand or fall together.’’ (2) ‘‘With respect to the rejection under § 103, claims 1–2 stand or fall together; claim 3 is believed to be separately patentable.’’ (3) ‘‘With respect to the rejection under § 102, claims 1–2 stand or fall together; claim 3 is believed to be separately patentable. With respect to the rejection under § 103, the claims stand or fall together.’’ • Appellant must specifically identify the points made by the Examiner. • Example: The Examiner states that Reference A teaches element B. Final Rejection mailed [insert date], page x, lines y-z. In response, appellant previously pointed out to the examiner why the examiner is believed to have erred. Amendment filed [enter date], pages 8–9. The response is [concisely state the response]. • Must Present All Arguments in Appeal Brief • Any Examiner conclusion or finding not challenged presumed correct.

29. Appendix • All pages in Appeal Brief, including the Appendix, need to be consecutively numbered. • Claim support and drawing analysis section • Applies to each independent claim and each dependent claim being argued separately. • Annotated Copy of Claim- after each limitation • Braces “{ }” & Bold Face (do not use brackets “[ ]”) • Within Braces • Page and Line No. (or paragraph no.) where supported • Drawing No. and Element No. • You do not have to identify every part of the application that provides support. • For example: • An apparatus comprising (1) a first valve {Fig. 2, element 25; ¶ 0005}, (2) a second valve {Fig. 2, element 31; ¶ 0006}, (3) a tank {Fig. 3, element 8; ¶ 0008}, (4) a pipe with the first valve disposed on one end and the tank disposed on the other end {Fig. 3, element 19; ¶ 0010}, and (5) * * *. • Separate “means or step plus function analysis” section, where applicable. • Similar requirement as claim support and drawing analysis section.

30. Appendix • Evidence Section • Requires a Table of contents. • Enclose Affidavits and Declarations, etc. that you are relying on for the appeal. • Affidavits and Declarations mentioned in Appeal Brief but not enclosed in Appendix will not be considered by the Board. • You do not need to enclose evidence not pertinent to the appeal. • For example, if you swore behind a reference with an affidavit, and the Examiner is now rejecting the claims based on a different piece of prior art, you do not need to include the affidavit (unless it swears behind the new reference as well). • Related Cases Section • Copies of orders and opinions from litigation and related applications

31. Comparison of Appeal Filings

32. Examiner’s Answer • Can no longer include a new ground of rejection. • Exactly opposite of proposed rules, as well as existing rules. • Whether a new ground of rejection has been made is determined on case-by-case basis. • When is a ground of rejection “new”? • When the “basic thrust” of “rejection” in the Examiner’s Answer and the rejection made in the final rejection “are different.” • What to do when presented with new rejection? • ????

33. Reply Briefs • Only a single reply brief is now authorized. • Any Reply Briefs received after the first will not be considered. • New content requirements – § 41.41(d) • Additional sections now required • Table of contents • Table of authorities • Statement of additional facts • If not filing a Reply Brief, send in a one-page cover letter indicating that no Reply Brief will be filed so that jurisdiction is transferred to the Board.

34. Comparison of Appeal Filings

35. Examiner’s Resp. to Reply Brief • Rules eliminate possibility for an Examiner’s Response. • Appeal proceeds directly to Board upon Appellant’s Reply Brief.

36. Oral Hearing • Must request within two months from date of Examiner's Answer. • Confirmation • Appellant must confirm attendance of the oral hearing. • Failure to timely confirm will result in waiver of request. • List of Technical Terms • When Appellant confirms attendance to the oral hearing, Appellant required to provide a list of technical terms or unusual words. § 41.47(g). • Because oral hearing is transcribed, it is believed that this will improve accuracy of the transcript.

37. Request for Rehearing • New content requirements – § 41.52(d) • Additional sections now required • Table of Contents • Table of Authorities • Argument format – § 41.52(f) • Must “state with particularity the points believed to have been misapprehended or overlooked by the Board.” • For example: • On page x, lines y–z of the Board’s opinion, the Board states that [set out what was stated]. The point misapprehended or overlooked was made to the Board in [identify paper, page and line where argument was made to the Board]. The response is [state response].

38. Comparison of Appeal Filings

39. Abandonment • Failure to file timely appeal brief will result in abandonment – § 41.37(a) • It is the filing of the appeal brief that perfects the appeal. • Key language: “proceedings on the appeal are terminated without further action on the part of the office” • No notice required! • Thus, time for filing CON or RCE would be before time for filing appeal brief expires.

40. Sanctions • Appellant misconduct during appeal can result in sanctions – § 41.56 • Holding certain facts as established • Precluding appellant from presenting or contesting an issue • Holding application on appeal abandoned • Etc. • Examples: • Appellant repeatedly declines to comply with procedural requirement. • Appellant does not directly answer questions posed by the Board- order holding certain facts established. • Appellant repeatedly fails to file paper complying with the rules- order expunging papers • Appellant refuses to properly file evidence- order excluding evidence. • Scope of sanction within the discretion of the Chief Administrative Patent Judge or the Board.

41. Recommendations • Avoid Appeals • Prevent Final Office Actions • MPEP 706.07(a) “Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither” • “necessitated by applicant's amendment of the claims, nor” • “based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).” • USPTO now broadly construing “necessitated by applicant's amendment of the claims” to mean an Amendment at any time. • Drafting the Application- Think Strategically • Avoid Future Final Office Actions- Think about the invention and draft more fallback (dependent) claims that have inventive aspects over the independent claims. • Know ahead of time when its time to quit- identify ahead of time your cut-off point in the fallback claims where the patent would not be worth pursuing. • File Information Disclosure Statements Quickly • Restriction Requirement • Pick Groups/Species with more fallback claims that have inventive aspects • First Office Action Response • Present all arguments even for dependent claims. • Keep at least one of the originally filed claims “clean” so that the Examiner can not make the next Office Action final (assuming you have valid patentability arguments) • Final Office Action- check if finality is correct (see above).

42. Recommendations • Interview to determine if the Examiner: • Does not understand the invention. • Does not like the claim language. • Does not believe any aspect of the invention is patentable. • Amendment After Final • Always file to prevent Examiner from raising new grounds during appeal. • File the Amendment even if the Examiner during the Interview indicates that the Amendment will not be entered • Non-entry of the Amendment will prevent a final first Office Action after you file an RCE • USPTO says you can’t rely on the Examiners statements during the Interview. • File Amendment within 2 month deadline to save money • Extensions of time calculated based on the later of the 3-month deadline or when the Examiner mails the Advisory Action. • Consider delaying filing RCE until after receive Advisory Action • Examiner might allow the case • In Advisory Action, you might receive comments that you can use to revise the Amendment to improve the chance for allowance • Amend claims to improve chance with Pre-Appeal Brief review program • Remove claim interpretation issues and highlight missing elements. • Request for Continued Examination (RCE) • Typically, less expensive than a continuation • Quicker Review by the Examiner • Divisional Application • Sometimes features in withdrawn claims have a better chance of being allowed.

43. Recommendations • Pre-Appeal Brief Review • Always try before a full appeal • Less expensive to prepare than a full Appeal Brief • Might reduce extension of time fees for Appeal Brief • Tailor prosecution so that you can be successful with this option • Highlight missing elements • Remove claim interpretation issues • Appeal Brief • Double check formatting (sections, font size, etc.) • Don’t make it easy for the Examiner to reject the brief. • Make all of your arguments. • Notify the Board immediately if an express abandonment or RCE has been filed. • This avoids an unfavorable decision appearing on the record. • Miscellaneous- Update signature blocks for all prosecution documents to include fax numbers and email addresses.