Appellate Procedure and Appellate Procedure and Petition PracticePetition Practice

By:By:

Michael A. Leonard IIMichael A. Leonard II

OverviewOverview

Appeals and Petitions can be an effective way to Appeals and Petitions can be an effective way to advance prosecution where Applicant and the Examiner advance prosecution where Applicant and the Examiner are unable to reach agreement and prosecution before are unable to reach agreement and prosecution before the Examiner, without third party intervention, seems the Examiner, without third party intervention, seems unlikely to be fruitfulunlikely to be fruitful

This presentation covers three types:This presentation covers three types:1.1. Pre-Appeal Brief Requests for Review (PABRFRs);Pre-Appeal Brief Requests for Review (PABRFRs);

2.2. Full appeals; and Full appeals; and

3.3. PetitionsPetitions

Prerequisite to Appeal or PetitionPrerequisite to Appeal or Petition

Cases may be appealed or petitioned after “the Cases may be appealed or petitioned after “the second or any subsequentsecond or any subsequent examination or examination or consideration by the examiner” (see 37 C.F.R. § consideration by the examiner” (see 37 C.F.R. § 1.113(a))1.113(a))

Accordingly, appeals and petitions will be Accordingly, appeals and petitions will be considered premature if submitted in response considered premature if submitted in response to the very first Office Action in a caseto the very first Office Action in a case

All final Actions by the USPTO are appealableAll final Actions by the USPTO are appealable

TypesTypes

Full AppealFull Appeal• Appeals cover rejectionsAppeals cover rejections

• A full appeal requires filing of an Appeal Brief meeting the requirements of 37 C.F.R. § 41.37 A full appeal requires filing of an Appeal Brief meeting the requirements of 37 C.F.R. § 41.37 and the filing of a Notice of Appealand the filing of a Notice of Appeal

• If a new Office Action is not issued or the application is not allowed (more on this later), the If a new Office Action is not issued or the application is not allowed (more on this later), the appeal will be decided by the Board of Patent Appeals and Interferences (BPAI)appeal will be decided by the Board of Patent Appeals and Interferences (BPAI)

• This is the most expensive optionThis is the most expensive option

Pre-Appeal Brief Request for Review (PABRFR)Pre-Appeal Brief Request for Review (PABRFR)• PABRFRs cover rejectionsPABRFRs cover rejections

• Requires submission of a PABRFR, the appropriate USPTO request form and a Notice of Requires submission of a PABRFR, the appropriate USPTO request form and a Notice of AppealAppeal

• The Examiner’ rejections must contain “clear error”The Examiner’ rejections must contain “clear error”

• Does not preclude a subsequent full appeal if PABRFR is not successfulDoes not preclude a subsequent full appeal if PABRFR is not successful

PetitionPetition• Petitions cover issues that are unappealable, such as objectionsPetitions cover issues that are unappealable, such as objections

• Petitions are made to the Director and grant is discretionaryPetitions are made to the Director and grant is discretionary

Full AppealFull Appeal

A Notice of Appeal must be filed either A Notice of Appeal must be filed either concurrently with or prior to filing of an Appeal concurrently with or prior to filing of an Appeal BriefBriefThe Notice of Appeal must be filed within the The Notice of Appeal must be filed within the extended statutory period for responding to an extended statutory period for responding to an Office Action (three months non-extended, up to Office Action (three months non-extended, up to six extended)six extended)The Appeal Brief must be filed either:The Appeal Brief must be filed either:1.1. Within Within two monthstwo months of filing of the Notice of Appeal; of filing of the Notice of Appeal;

oror2.2. If filed subsequent to a PABRFR, within If filed subsequent to a PABRFR, within one monthone month

of a Panel Decision for the PABRFR.of a Panel Decision for the PABRFR.

Requirements for Appeal BriefRequirements for Appeal Brief

Appeal Briefs must meet the ten enumerated Appeal Briefs must meet the ten enumerated requirements of 37 C.F.R. § 41.37(c)(1)requirements of 37 C.F.R. § 41.37(c)(1)Each section should contain appropriate headings, Each section should contain appropriate headings, such as the titles of each enumerated sectionsuch as the titles of each enumerated section

i.i. Real Party in InterestReal Party in Interest. Appellants should identify the name . Appellants should identify the name of the real party in interest. If the inventors have assigned the of the real party in interest. If the inventors have assigned the invention to another party, Applicants may make note of the invention to another party, Applicants may make note of the assignment by reel/frame number, such as “The real party in assignment by reel/frame number, such as “The real party in interest in this application is <ENTITY NAME> of <CITY, interest in this application is <ENTITY NAME> of <CITY, STATE/NATION> by virtue of an Assignment that was STATE/NATION> by virtue of an Assignment that was recorded on <DATE>, at Reel <#>, Frame <#>.”recorded on <DATE>, at Reel <#>, Frame <#>.”

ii.ii. Related Appeals and InterferencesRelated Appeals and Interferences. Appellants must . Appellants must identify prior or pending appeals, interferences and judicial identify prior or pending appeals, interferences and judicial proceedings that may be directly affected by or have a bearing proceedings that may be directly affected by or have a bearing on the BPAI’s decision in the present appeal. Most cases on the BPAI’s decision in the present appeal. Most cases have no such related proceedings.have no such related proceedings.

Requirements for Appeal Brief Requirements for Appeal Brief (cont.)(cont.)

iii.iii. Status of ClaimsStatus of Claims. This section should state the status of all . This section should state the status of all claims (rejected, allowed, withdrawn, objected to, cancelled) in claims (rejected, allowed, withdrawn, objected to, cancelled) in the application, as well as identify claims that are the subject the application, as well as identify claims that are the subject of the appeal.of the appeal.

iv.iv. Status of AmendmentsStatus of Amendments. If any amendments were filed . If any amendments were filed subsequent to a final rejection, such amendments should be subsequent to a final rejection, such amendments should be listed here. Amendments to cancel claims and to rewrite listed here. Amendments to cancel claims and to rewrite dependent claims in independent form are permitted, but other dependent claims in independent form are permitted, but other amendments generally will not be entered.amendments generally will not be entered.

v.v. Summary of Claimed Subject MatterSummary of Claimed Subject Matter. Support for every . Support for every independent claim, and for every dependent means-plus-independent claim, and for every dependent means-plus-function claim that is argued separately, must be included function claim that is argued separately, must be included here. Such supporting citations “shall refer to the specification here. Such supporting citations “shall refer to the specification by page and line number, and to the drawing, if any, by by page and line number, and to the drawing, if any, by reference characters.”reference characters.”

Requirements for Appeal Brief Requirements for Appeal Brief (cont.)(cont.)

vi.vi. Grounds of Rejection to be Reviewed on AppealGrounds of Rejection to be Reviewed on Appeal. Each . Each ground of rejection to be reviewed should be presented here. ground of rejection to be reviewed should be presented here. Per the above, only rejections, and not objections, may be Per the above, only rejections, and not objections, may be reviewed on appeal.reviewed on appeal.

vii.vii. ArgumentArgument. Each ground of rejection should be listed under a . Each ground of rejection should be listed under a separate heading and each separately argued claim should separate heading and each separately argued claim should be presented under a separate sub-heading. Claims may be be presented under a separate sub-heading. Claims may be argued separately or in a group. However, if argued in a argued separately or in a group. However, if argued in a group, the claims stand or fall group, the claims stand or fall togethertogether. It is generally wise to . It is generally wise to argue all independent claims separately. Further, all argue all independent claims separately. Further, all applicable arguments should be presented since arguments applicable arguments should be presented since arguments that are not presented are that are not presented are waivedwaived..

viii.viii. Claims AppendixClaims Appendix. This appendix only contains claims that . This appendix only contains claims that are actually involved in the appeal.are actually involved in the appeal.

ix.ix. Evidence AppendixEvidence Appendix. Any affidavit evidence or other . Any affidavit evidence or other evidence entered by the Examiner and relied upon by evidence entered by the Examiner and relied upon by Applicant should be included here.Applicant should be included here.

Requirements for Appeal Brief Requirements for Appeal Brief (cont.)(cont.)

x.x. Related Proceedings AppendixRelated Proceedings Appendix. This appendix should . This appendix should contain copies of decisions rendered by a court or the BPAI contain copies of decisions rendered by a court or the BPAI identified in the Related Appeals or Interferences section.identified in the Related Appeals or Interferences section.

NOTENOTE:: Although additional evidence and related proceedings Although additional evidence and related proceedings are often not included in an appeal, sections indicating that no are often not included in an appeal, sections indicating that no such evidence or proceedings are present such evidence or proceedings are present mustmust be included. be included. Appellants can simply state: “No evidence under sections 37 Appellants can simply state: “No evidence under sections 37 C.F.R. §§ 1.130, 1.131 or 1.132 has been entered or will be relied C.F.R. §§ 1.130, 1.131 or 1.132 has been entered or will be relied upon by Appellant in this appeal” for evidence and “No decisions upon by Appellant in this appeal” for evidence and “No decisions of the Board or of any court have been identified under 37 C.F.R. of the Board or of any court have been identified under 37 C.F.R. § 41.37(c)(1)(ii)” for related proceedings.§ 41.37(c)(1)(ii)” for related proceedings.

Consequences for Non-ComplianceConsequences for Non-Compliance

If an Appeal Brief is deemed to be non-compliant with the If an Appeal Brief is deemed to be non-compliant with the requirements listed above, a Notice of Non-Compliant Appeal Brief requirements listed above, a Notice of Non-Compliant Appeal Brief will be sent to Appellant identifying the issueswill be sent to Appellant identifying the issuesIf Appellant does not satisfy the Notice of Non-Compliant Appeal If Appellant does not satisfy the Notice of Non-Compliant Appeal Brief, the appeal will be dismissed and the application will become Brief, the appeal will be dismissed and the application will become abandonedabandonedThe USPTO recently revised the appeal procedure and Appeal The USPTO recently revised the appeal procedure and Appeal Briefs are first reviewed now by the BPAIBriefs are first reviewed now by the BPAIThe BPAI will accept Appeal Briefs that contain minor informalities, The BPAI will accept Appeal Briefs that contain minor informalities, i.e.i.e., do not substantively affect the BPAI’s ability to render a , do not substantively affect the BPAI’s ability to render a decision, and forward such previously defective Appeal Briefs to the decision, and forward such previously defective Appeal Briefs to the Examiner for considerationExaminer for considerationHowever, what precisely qualifies as a “minor informality” is not yet However, what precisely qualifies as a “minor informality” is not yet known and Appellants should make every effort to comply with the known and Appellants should make every effort to comply with the requirements of 37 C.F.R. § 41.37(c)(1)requirements of 37 C.F.R. § 41.37(c)(1)

ProcedureProcedure

When an Appeal Brief is filed, the Appeal Brief will first be When an Appeal Brief is filed, the Appeal Brief will first be reviewed by paralegals of the BPAIreviewed by paralegals of the BPAIShould the Appeal Brief be deemed compliant, the Appeal Brief Should the Appeal Brief be deemed compliant, the Appeal Brief will then be forwarded to the Examiner for reviewwill then be forwarded to the Examiner for reviewA conference will be held between the Examiner, his or her A conference will be held between the Examiner, his or her supervisor and an appeals specialistsupervisor and an appeals specialistIf the determination of the conference is that the arguments in the If the determination of the conference is that the arguments in the Appeal Brief overcome the rejection(s), the application may be Appeal Brief overcome the rejection(s), the application may be allowed or, more commonly, a new Office Action may be issuedallowed or, more commonly, a new Office Action may be issuedIf the determination is that the Examiner’s arguments in the Office If the determination is that the Examiner’s arguments in the Office Action are correct, the Appeal Brief will eventually proceed to the Action are correct, the Appeal Brief will eventually proceed to the BPAI, but the Examiner may respond to the Appeal Brief via an BPAI, but the Examiner may respond to the Appeal Brief via an Examiner’s AnswerExaminer’s Answer

Examiner’s AnswerExaminer’s Answer

The Examiner’s Answer may offer further support for the The Examiner’s Answer may offer further support for the rejections presented in the Office Action and often reiterates rejections presented in the Office Action and often reiterates significant portions thereofsignificant portions thereofThe Examiner’s Answer may also include a new ground of The Examiner’s Answer may also include a new ground of rejection; if this happens, Appellant must take one of the rejection; if this happens, Appellant must take one of the following two actions to avoid following two actions to avoid sua spontesua sponte dismissal of the dismissal of the appeal:appeal:1.1. Request that prosecution be reopened before the Examiner; orRequest that prosecution be reopened before the Examiner; or2.2. Maintain the appeal by filing a Reply Brief.Maintain the appeal by filing a Reply Brief.

Reply BriefReply Brief

Appellant may file a Reply Brief within two Appellant may file a Reply Brief within two months of the date of the Examiner’s Answermonths of the date of the Examiner’s AnswerThe Reply Brief may not include new or non-The Reply Brief may not include new or non-admitted amendments or evidenceadmitted amendments or evidenceA Reply Brief that does not meet these A Reply Brief that does not meet these requirements may not be consideredrequirements may not be consideredA Supplemental Examiner’s Answer may be A Supplemental Examiner’s Answer may be issued in response to a Reply Brief, and issued in response to a Reply Brief, and Appellant may issue another Reply Brief Appellant may issue another Reply Brief responsive theretoresponsive thereto

Oral HearingOral Hearing

Appellant may request an oral hearing pursuant to 37 C.F.R. Appellant may request an oral hearing pursuant to 37 C.F.R. § 41.47§ 41.47A written request entitled “REQUEST FOR ORAL HEARING” A written request entitled “REQUEST FOR ORAL HEARING” must be filed within two months from the date of an must be filed within two months from the date of an Examiner’s Answer or Supplemental Examiner’s AnswerExaminer’s Answer or Supplemental Examiner’s AnswerAppellant receives 20 minutes and, if he or she shows up, the Appellant receives 20 minutes and, if he or she shows up, the Examiner may receive 15 minutes to make argumentsExaminer may receive 15 minutes to make argumentsOral hearings may permit Appellant to present visual evidence Oral hearings may permit Appellant to present visual evidence and to make strong, persuasive oral arguments before the and to make strong, persuasive oral arguments before the PanelPanelThe Panel often asks questions that may not be anticipated The Panel often asks questions that may not be anticipated and all statements by Appellants will be on the record, and all statements by Appellants will be on the record, whether positive of negativewhether positive of negative

The Board’s DecisionThe Board’s Decision

When the Examiner has finished with his or her role in the appeal, When the Examiner has finished with his or her role in the appeal, the briefs will be submitted to the BPAI for decisionthe briefs will be submitted to the BPAI for decision

The BPAI may either affirm the Examiner’s rejection(s), affirm in part The BPAI may either affirm the Examiner’s rejection(s), affirm in part and reverse in part, reverse the Examiner’s rejections completely, or and reverse in part, reverse the Examiner’s rejections completely, or remand the application to the Examiner to consider issues with remand the application to the Examiner to consider issues with BPAI guidanceBPAI guidance

The BPAI may issue a new ground of rejection and in response The BPAI may issue a new ground of rejection and in response thereto, Appellant may either reopen prosecution or request a thereto, Appellant may either reopen prosecution or request a rehearingrehearing

The BPAI may advise how a claim could be amended to overcome The BPAI may advise how a claim could be amended to overcome a rejectiona rejection

The BPAI may also request that Appellant brief any matter that the The BPAI may also request that Appellant brief any matter that the BPAI deems to be of assistance in reaching a decisionBPAI deems to be of assistance in reaching a decision

Action Following DecisionAction Following Decision

After rendering a decision, the BPAI will After rendering a decision, the BPAI will return the case to the Examinerreturn the case to the Examiner

Reversed claims will be allowed and if Reversed claims will be allowed and if dependent, amended into independent dependent, amended into independent formform

Affirmed and objected-to claims will be Affirmed and objected-to claims will be cancelledcancelled

Pre-Appeal Brief Request for Pre-Appeal Brief Request for Review (PABRFR)Review (PABRFR)

The PABRFR may be effective if rejections in an The PABRFR may be effective if rejections in an Office Action contain clear errorOffice Action contain clear error

PABRFRs are generally considerably cheaper PABRFRs are generally considerably cheaper than a full appealthan a full appeal

The stated goals of the PABRFR program are to:The stated goals of the PABRFR program are to: 1.1. Identify the presence or absence of clearly improper Identify the presence or absence of clearly improper

rejections based upon error(s) in facts; or rejections based upon error(s) in facts; or

2.2. Identify the omission or presence of essential Identify the omission or presence of essential elements required to establish a elements required to establish a prima facieprima facie rejection.rejection.

Requirements for a PABRFRRequirements for a PABRFR

Notice of AppealNotice of Appeal

PABRFR Request Form (PTO/SB/33)PABRFR Request Form (PTO/SB/33)

PABRFR arguments regarding why the Examiner’s PABRFR arguments regarding why the Examiner’s rejection(s) allegedly contain clear errorrejection(s) allegedly contain clear error

The arguments have a strict five page limit, but there are The arguments have a strict five page limit, but there are not explicit requirements regarding font or spacing; not explicit requirements regarding font or spacing; although generally, arguments should be double-spaced although generally, arguments should be double-spaced if possible to increase readabilityif possible to increase readability

Since PABRFR will be reviewed by the Examiner’s Since PABRFR will be reviewed by the Examiner’s supervisor and an appeals specialist, many arguments supervisor and an appeals specialist, many arguments from last Response may be reusedfrom last Response may be reused

When PABRFR is EffectiveWhen PABRFR is Effective

A PABRFR may be effective where there is clear A PABRFR may be effective where there is clear error in rejections of an Office Action and error in rejections of an Office Action and Applicants believe these will be readily apparent Applicants believe these will be readily apparent to a third partyto a third party

Issues of reasonable interpretation are probably Issues of reasonable interpretation are probably not good candidates for resolution via PABRFRnot good candidates for resolution via PABRFR

PABRFRs do not foreclose the filing of a PABRFRs do not foreclose the filing of a subsequent full appeal if the PABRFR is not subsequent full appeal if the PABRFR is not successfulsuccessful

PetitionsPetitions

Petitions are appropriate for issues that are not Petitions are appropriate for issues that are not subject to appeal per 37 C.F.R. § 41.47; subject to appeal per 37 C.F.R. § 41.47; accordingly, rejections are accordingly, rejections are notnot candidates for candidates for petitionpetition

Petitions may be useful for attempting to resolve Petitions may be useful for attempting to resolve non-rejection issues such as challenging non-rejection issues such as challenging objections, improper finality of an Office Action, objections, improper finality of an Office Action, challenges to a restriction requirement, or challenges to a restriction requirement, or requesting revival of an abandoned application, requesting revival of an abandoned application, to name a fewto name a few

RequirementsRequirements

The Director may require that a Response to a non-final The Director may require that a Response to a non-final Office Action have been filed under 37 C.F.R. § 1.111 Office Action have been filed under 37 C.F.R. § 1.111 and that the Examiner have repeated the petitionable and that the Examiner have repeated the petitionable action before allowing the petition to proceedaction before allowing the petition to proceed

Petitions generally must be filed within two months of a Petitions generally must be filed within two months of a petitionable actionpetitionable action

Unlike actions requiring the filing of a Notice of Appeal, Unlike actions requiring the filing of a Notice of Appeal, petitions petitions do notdo not stay time requirements for responding to stay time requirements for responding to items such as Office Actionsitems such as Office Actions

Granting of petitions is completely discretionaryGranting of petitions is completely discretionary

ConclusionConclusion

Full appeals, PABRFRs and petitions can Full appeals, PABRFRs and petitions can be useful tools for Applicants to advance be useful tools for Applicants to advance prosecution when unresolvable issues with prosecution when unresolvable issues with an Examiner arisean Examiner ariseKnowing when to use these tools can help Knowing when to use these tools can help move prosecution forward in a way that is move prosecution forward in a way that is effective for a particular client in both effective for a particular client in both preserving claim scope and reducing preserving claim scope and reducing overall cost by avoiding unfruitful overall cost by avoiding unfruitful prosecution iterationsprosecution iterations