Revised Procedure for Appeal Brief Review
On March 29, 2010, the U.S. Patent and Trademark Office (USPTO) issued a memorandum indicating that the Board of Patent Appeals and Interferences (BPAI) will have the
sole responsibility for determining whether Appeal Briefs filed during patent prosecution comply with 37 C.F.R. § 41.37 (to view the memo, please click
Here). The memorandum also indicated that the
determination of compliance will be made before the Appeal Brief is forwarded to the Examiner and within one month from the filing of the Appeal Brief. This should
prevent the process from taking an undue amount of time.
Moreover, the memorandum indicated that the BPAI will accept Appeal Briefs that contain minor informalities,
i.e., do not substantively affect the BPAI’s ability to render a decision, and forward such previously defective Appeal Briefs to the Examiner for
consideration. If the Appeal Brief is deemed to be non-compliant with 37 C.F.R. § 41.37 in a way that substantively affects the BPAI's ability to render a decision, a
Notice of Non-Compliant Brief will be sent to the applicant and the applicant will be required to file a corrected brief within the time period set forth in the
notice. If the appeal brief is deemed to be compliant, the appeal brief will be sent to the Examiner for consideration. Furthermore, Examiners may no longer hold
Appeal Briefs to be defective, including those Appeals Briefs that are already on the Examiner’s docket, because such briefs have already been reviewed and accepted by
the Patent Appeal Center.
In sum, under the revised procedure, the BPAI, and not the Examiner, will determine whether Appeal Briefs comply with 37 C.F.R. § 41.37.
The revised procedures appear to be a part of a laudible effort by the USPTO to reduce the appeal pendency from the filing of a Notice of Appeal to docketing of the
appeal by accepting briefs that have non-substantive formalities defects. The revised procedures will also increase consistency in determining whether an Appeal Brief
complies with 37 C.F.R. § 41.37. Previously, Examiners made the determination of whether an Appeal Brief was in compliance with the various technical requirements of
37 C.F.R. § 41.37. As there are many Examiners in many different art units at the USPTO, there was not a uniform standard for determining compliance. For instance, in
the Summary of Claimed Subject Matter section of an Appeal Brief, one Examiner may deem that a citation to a paragraph alone in an application is sufficient, whereas another
Examiner may decide that the citation must include the specific line numbers in the paragraph (37 C.F.R. § 41.37(c)(1)(v) states that this section "shall refer to the
specification by page and line number"; accordingly, the different positions taken by Examiners are not surprising where specifications use paragraphs rather than line
numbers). Preventing such inconsistency is beneficial.
Further, while usually not the case, formalities rejections have the potential to be used to delay consideration of an appeal on the merits or to artificially lower
the number of docketed appeals for consideration by the BPAI in the short term. The new procedure should serve to bring more uniformity to the appeal process with
respect to Appeal Brief compliance and to reduce the time that it would take for previously non-compliant Appeal Briefs to be considered on the merits. However, while
the Examiner no longer determines compliance with 37 C.F.R. § 41.37, the Examiner's inclusion in the appeal process is helpful and often highly productive. In many cases, a
new Office Action including better art and rejections is issued and prosecution is reopened. Sometimes, the application is even allowed before ever proceding to the
Accordingly, the new appeal procedure appears to be a positive improvement that will add uniformity to the process while allowing the Examiner to focus on the
merits of the appeal.