Appellate Procedure and Petition Practice

1. Appellate Procedure and Petition Practice By: Michael A. Leonard II

2. Overview • Appeals and Petitions can be an effective way to advance prosecution when the Applicant and the Examiner are unable to reach an agreement and prosecution before the Examiner, without third party intervention, seems unlikely to be fruitful • This presentation covers three types: • Full appeals; • Pre-Appeal Brief Requests for Review (PABRFRs); and • Petitions

3. Prerequisite to Appeal or Petition • Cases may be appealed or petitioned after “the second or any subsequent examination or consideration by the examiner” (see 37 C.F.R. § 1.113(a)) • Accordingly, appeals and petitions will be considered premature if submitted in response to the very first Office Action in a case • All final Actions by the USPTO are appealable

4. Types • Full Appeal • Appeals cover rejections • A full appeal requires the filing of an Appeal Brief meeting the requirements of 37 C.F.R. § 41.37 and 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 appeal will be decided by the Board of Patent Appeals and Interferences (BPAI) • This is the most expensive option • Pre-Appeal Brief Request for Review (PABRFR) • PABRFRs cover rejections • Requires submission of a PABRFR, the appropriate USPTO request form and a Notice of Appeal • The Examiner’ rejections must contain “clear error” • Does not preclude a subsequent full appeal if PABRFR is not successful • Petition • Petitions cover issues that are unappealable, such as objections • Petitions are made to the Director and grant is discretionary

5. Full Appeal • A Notice of Appeal must be filed either concurrently with or prior to filing an Appeal Brief • The Notice of Appeal must be filed within the extended statutory period for responding to an Office Action (three months non-extended, up to six extended) • The Appeal Brief must be filed either: • Within two months of filing of the Notice of Appeal; or • If filed subsequent to a PABRFR, within one month of a Panel Decision for the PABRFR.

6. Requirements for Appeal Brief • Appeal Briefs must meet the ten enumerated requirements of 37 C.F.R. § 41.37(c)(1) • Each section should contain appropriate headings, such as the titles of each enumerated section • Real Party in Interest. Appellants should identify the name of the real party in interest. If the inventors have assigned the invention to another party, Applicants may make note of the assignment by reel/frame number, such as “The real party in interest in this application is <ENTITY NAME> of <CITY, STATE/NATION> by virtue of an Assignment that was recorded on <DATE>, at Reel <#>, Frame <#>.” • Related Appeals and Interferences. Appellants must identify prior or pending appeals, interferences and judicial proceedings that may be directly affected by or have a bearing on the BPAI’s decision in the present appeal. Most cases have no such related proceedings.

7. Requirements for Appeal Brief (cont.) • Status of Claims. This section should state the status of all claims (rejected, allowed, withdrawn, objected to, cancelled) in the application, as well as identify claims that are the subject of the appeal. • Status of Amendments. If any amendments were filed subsequent to a final rejection, such amendments should be listed here. Amendments to cancel claims and to rewrite dependent claims in independent form are permitted, but other amendments generally will not be entered. • Summary of Claimed Subject Matter. Support for every independent claim, and for every dependent means-plus-function claim that is argued separately, must be included here. Such supporting citations “shall refer to the specification by page and line number, and to the drawing, if any, by reference characters.”

8. Requirements for Appeal Brief (cont.) • Grounds of Rejection to be Reviewed on Appeal. Each ground of rejection to be reviewed should be presented here. Per the above, only rejections, and not objections, may be reviewed on appeal. • Argument. Each ground of rejection should be listed under a separate heading and each separately argued claim should be presented under a separate sub-heading. Claims may be argued separately or in a group. However, if argued in a group, the claims stand or fall together. It is generally wise to argue all independent claims separately. Further, all applicable arguments should be presented since arguments that are not presented are waived. • Claims Appendix. This appendix only contains claims that are actually involved in the appeal. • Evidence Appendix. Any affidavit evidence or other evidence entered by the Examiner and relied upon by Applicant should be included here.

9. Requirements for Appeal Brief (cont.) • Related Proceedings Appendix. This appendix should contain copies of decisions rendered by a court or the BPAI identified in the Related Appeals or Interferences section. • NOTE: Although additional evidence and related proceedings are often not included in an appeal, sections indicating that no such evidence or proceedings are present must be included. 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 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. § 41.37(c)(1)(ii)” for related proceedings.

10. Consequences for Non-Compliance • If an Appeal Brief is deemed to be non-compliant with the requirements listed above, a Notice of Non-Compliant Appeal Brief will be sent to Appellant identifying the issues • If Appellant does not satisfy the Notice of Non-Compliant Appeal Brief, the appeal will be dismissed and the application will become abandoned • The USPTO recently revised the appeal procedure and Appeal Briefs are first reviewed now by the BPAI • 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 • However, what precisely qualifies as a “minor informality” is not yet known and Appellants should make every effort to comply with the requirements of 37 C.F.R. § 41.37(c)(1)

11. Procedure • When an Appeal Brief is filed, the Appeal Brief will first be reviewed by paralegals of the BPAI • Should the Appeal Brief be deemed compliant, the Appeal Brief will then be forwarded to the Examiner for review • A conference will be held between the Examiner, his or her supervisor and an appeals specialist • If the determination of the conference is that the arguments in the Appeal Brief overcome the rejection(s), the application may be allowed or, more commonly, a new Office Action may be issued • If the determination is that the Examiner’s arguments in the Office Action are correct, the Appeal Brief will eventually proceed to the BPAI, but the Examiner may respond to the Appeal Brief via an Examiner’s Answer

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

13. Reply Brief • Appellant may file a Reply Brief within two months of the date of the Examiner’s Answer • The Reply Brief may not include new or non-admitted amendments or evidence • A Reply Brief that does not meet these requirements may not be considered • A Supplemental Examiner’s Answer may be issued in response to a Reply Brief, and Appellant may issue another Reply Brief responsive thereto

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

15. The Board’s Decision • When the Examiner has finished with his or her role in the appeal, the briefs will be submitted to the BPAI for decision • The BPAI may either affirm the Examiner’s rejection(s), affirm in part and reverse in part, reverse the Examiner’s rejections completely, or remand the application to the Examiner to consider issues with BPAI guidance • The BPAI may issue a new ground of rejection and in response thereto, Appellant may either reopen prosecution or request a rehearing • The BPAI may advise how a claim could be amended to overcome a rejection • The BPAI may also request that Appellant brief any matter that the BPAI deems to be of assistance in reaching a decision

16. Action Following Decision • After rendering a decision, the BPAI will return the case to the Examiner • Reversed claims will be allowed and if dependent, amended into independent form • Affirmed and objected-to claims will be cancelled

17. Pre-Appeal Brief Request for Review (PABRFR) • The PABRFR may be effective if rejections in an Office Action contain clear error • PABRFRs are generally considerably cheaper than a full appeal • The stated goals of the PABRFR program are to: • Identify the presence or absence of clearly improper rejections based upon error(s) in facts; or • Identify the omission or presence of essential elements required to establish a prima facie rejection.

18. Requirements for a PABRFR • Notice of Appeal • PABRFR Request Form (PTO/SB/33) • PABRFR arguments regarding why the Examiner’s rejection(s) allegedly contain clear error • The arguments have a strict five page limit, but there are not explicit requirements regarding font or spacing; although generally, arguments should be double-spaced if possible to increase readability • Since PABRFR will be reviewed by the Examiner’s supervisor and an appeals specialist, many arguments from last Response may be reused

19. When PABRFR is Effective • A PABRFR may be effective where there is clear error in rejections of an Office Action and Applicants believe these will be readily apparent to a third party • Issues of reasonable interpretation are probably not good candidates for resolution via PABRFR • PABRFRs do not foreclose the filing of a subsequent full appeal if the PABRFR is not successful

20. Petitions • Petitions are appropriate for issues that are not subject to appeal per 37 C.F.R. § 41.47; accordingly, rejections are not candidates for petition • Petitions may be useful for attempting to resolve non-rejection issues such as challenging objections, improper finality of an Office Action, challenges to a restriction requirement, or requesting revival of an abandoned application, to name a few

21. Requirements • The Director may require that a Response to a non-final Office Action have been filed under 37 C.F.R. § 1.111 and that the Examiner have repeated the petitionable action before allowing the petition to proceed • Petitions generally must be filed within two months of a petitionable action • Unlike actions requiring the filing of a Notice of Appeal, petitions do not stay time requirements for responding to items such as Office Actions • Granting of petitions is completely discretionary

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