PTO Proposes Rescission of Stayed Ex Parte Appeals Rules

USPTO Director David Kappos

The United States Patent and Trademark Office today issued a Notice of Proposed Rulemaking that proposes changes to the rules governing ex parte patent appeals before the Board of Patent Appeals and Interferences. The notice requests public comment on the proposed changes, which include rescinding the highly unpopular 2008 Final Rule, implementation of which has been stayed.  According to the Patent Office, this latest proposal to change appeals practice comes after consideration of the comments USPTO received at a public roundtable held in January and in response to an Advance Notice of Proposed Rulemaking in December 2009.

“We hear often from stakeholders that the patent appellate process is too complicated and burdensome,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The goal of this proposed rulemaking is to simplify the appellate process in a way that reduces the burden on appellants and examiners to present an appeal to the Board.”

Those who have been following the proposed changes to appellate practice before the Board of Patent Appeals and Interferences will recall that back on July 30, 2007, the Office published a notice of proposed rulemaking governing practice before the Board in ex parte patent appeals. The public was invited to submit written comments. As was typical of the Dudas Administration, the comments received were summarily rejected, because after all patent attorneys and applicants were the problem in the mind of the Dudas Administration.

On June 10, 2008, a final rulemaking was then published in the Federal Register. This final rule stated that the effective and applicability dates were December 10, 2008. On June 9, 2008, the Office published a 60-day Federal Register notice requesting the Office of Management and Budget (OMB) establish a new information collection for BPAI items in the final rule and requesting public comment on the burden impact of the final rule under the provisions of the Paperwork Reduction Act (PRA). On October 8, 2008, the Office published a 30-day Federal Register notice stating that the proposal for the collection of information under the final rule was being submitted to OMB and requesting that comments on the proposed information collection be submitted to OMB. Because the information collection process had not been completed by the original effective and applicability date of the final rule, the Office published a Federal Register notice on December 8, 2008 notifying the public that the effective and applicability dates of the final rule was not December 10, 2008, and that the effective and applicability dates would be delayed until a subsequent notice.

On January 20, 2009, the Assistant to the President and Chief of Staff, Rahm Emmanuel, instructed agencies via a memorandum entitled, ‘‘Regulatory Review,’’ to consider seeking comments for an additional 30 days on rules that were published in the Federal Register and had not yet become effective by January 20, 2009. On January 21, 2009, the Office of Management and Budget issued a memorandum entitled, ‘‘Implementation of Memorandum Concerning Regulatory Review,’’ which provided agencies further guidance on such rules that had not yet taken effect. For such rules, both memoranda stated that agencies should consider reopening the rulemaking process to review any significant concerns involving law or policy that have been raised. Of course, there had been significant concern raised, but ignored, relative to the extremely burdensome appeals rules.

On December 22, 2009, the Office published an Advance Notice of Proposed Rulemaking (ANPRM) proposing further modifications to the stayed final rule and seeking public comment via a public roundtable and written comment. So now, in light of the comments received, the Patent Office is now proposing to rescind the stayed final rule and is proposing new changes to the current rules of practice before the Board in ex parte appeals. As a result, the Office is now soliciting input from interested members of the public on the proposed new changes to the current rule.

Before proceeding with discussion on the proposed new changes, let’s recall how this process was able to become so horribly convoluted. Originally the USPTO followed a rather unorthodox and bizarre procedure in promulgating those previously Final Appeals Rules. In short, the Patent Office had not been truthful with the OMB about the financial costs that would fall on the industry to comply with the rules. On top of that, an agency normally obtains Paperwork Reduction Act clearance at the time that a new rule is published as a Notice of Proposed Rulemaking. The agency then submits the rule to OMB shortly thereafter for review. However, in this case, the USPTO certified to OMB that the total economic burden was essentially zero (which everyone knew was simply untrue) and made no request for Paperwork Approval until the day before the publication of the Notice of Final Rule. As a result, even though the Appeals Rules were published as a final rule, the Patent Office could not enforce it because they failed to timely seek OMB approval under the Paperwork Reduction Act. The person widely recognized as having brought down the appeals rules was David Boundy of Cantor Fitzgerald, who never relented in the fight.

With respect to this latest USPTO proposal, the Office proposes to amend the rules of practice in ex parte patent appeals to avoid undue burden on appellants or examiners to provide information from the record to the Board, to eliminate any gap in time from the end of briefing to the commencement of the Board’s jurisdiction, to clarify and simplify petitions practice in appeals, and to reduce confusion as to which claims are on appeal. More specifically, the Office proposes to amend the rules to:

(1) Remove several of the current briefing requirements for an appeal brief,
(2) provide for the Board to take jurisdiction over the appeal earlier in the appeal process,
(3) eliminate the Board’s authority, absent the Director’s approval, to remand an application to the examiner,
(4) no longer require examiners to acknowledge receipt of reply briefs,
(5) create specified procedures under which an appellant can seek review of an undesignated new ground of rejection in either an examiner’s answer or in a Board decision,
(6) provide that the Board will presume that the appeal is taken from the rejection of all claims under rejection unless cancelled by an applicant’s amendment, and
(7) clarify that, for purposes of the examiner’s answer, any rejection that relies upon
new evidence shall be designated as a new ground of rejection.

The Federal Register Notice explains that the purpose of the rules is primarily to lessen the burden to applicants and examiners.  The Notice points out that because so much of the information required to be submitted by the applicant and examiners is already available in the Image File Wrapper, it is unnecessary for appellants or examiners to provide this information to the Board. Moreover, by eliminating these briefing requirements, the Office expects to reduce the number of non-compliant appeal briefs and the number of examiners’ answers returned to the examiner due to non-compliance, which are a significant cause of delays on appeal.

Perhaps unrelated to the substance of the new proposed rules, one comment to the previous Federal Register Notice requested that the Office provide statistics on the Pre-Appeal Brief Conference program. The Patent Office complied by providing a chart showing the information for each full fiscal year since the Pre-Appeal Brief Conference program was launched.  The following charts show: (1) The annual number of such requests, (2) the percent of notices of appeal that contain a request, (3) the outcomes of the conferences, and (4) a comparison of the outcomes of the Pre-Appeal Brief Conference to the Appeal Conference.

The Federal Register Notice, in addition to setting forth proposed changes, also provides information that should probably be considered as appropriate in a Guidelines document.  For example, the Notice discusses new grounds of rejection by explaining that the examiner is not required to use identical language in both the examiner’s answer and the Office action from which the appeal is taken. The Notice goes on to explain that it is not a new ground of rejection so long as the evidence relied upon is the same and the ‘basic thrust of the rejection is the same.  The Notice then goes on to list the following situations, which are considered a new ground of rejection.

1. Changing the statutory basis of rejection from §102 to §103.

2. Changing the statutory basis of rejection from §103 to §102, based on a different teaching.

3. Citing new calculations in support of overlapping ranges.

4. Citing new structure in support of structural obviousness.

5. Pointing to a different portion of the claim to maintain a ‘‘new matter’’ rejection.

The Notice then proceeds to explain what would not be considered a new ground of rejection.

1. Citing a different portion of a reference which goes no farther than, and merely elaborates upon, what is taught in the previously cited portion of that reference.

2. Changing the statutory basis of rejection from §103 to §102, but relying on the same teachings.

3. Relying on fewer than all references in support of a §103 rejection, but relying on the same teachings.

4. Changing the order of references in the statement of rejection, but relying on the same teachings of those references.

5. Considering, in order to respond to applicant’s arguments, other portions of a reference submitted by the applicant.

To the extent there is anything here that jumps out as potentially controversial it is the fact that the Board would no longer have the authority to issue a remand to the examiner and all remands would have to be ordered by the Director.  In fact, in the previous Federal Register Notice it was suggested that the Chief Judge of the Board or Patent Appeals and Interferences be the gatekeeper with respect to whether to allow a remand. The Office received a wide range of comments regarding, with some comments in direct contradiction with others. Two comments expressed the view that the Chief Administrative Patent Judge should not have sole authority over merits remands. However, another comment expressed the opposite view that allowing the Chief Administrative Patent Judge to issue remand orders would improve the appellate process before the Board. Another comment expressed the view that the Board should issue remands sparingly. Yet another comment expressed the distinct view that the remand power is an important tool for the Board to require an examiner to correct errors and that it promotes efficiency at the Board by freeing judges from doing the job of the examiner and allows the examiner to correct errors based on oversight. However, another comment was in favor of the proposed change, noting that the Board has used its remand power to avoid deciding cases on the merits and instead remanded cases to the examiner.

The Office’s position relative to when to authorize a remand is that a Director-ordered remands would be used in most instances to correct Board from otherwise deciding the issues before it.  While likely to engender some sharp opinions on both sides, this probably will not be much of a change because for some time now the Board has been encouraged to handle everything without remand in order to create efficiencies by getting to a decision without need to add a lengthy remand process that only forestalls a decision for the applicant.  Nevertheless, Proposed Bd.R. 41.35(b) would remove from the current rule the provision that gives the Board the power to return an appeal to the examiner if the Board deems that a file is not complete or not in compliance with the requirements of Subpart B. Rather, if a file is not in condition for the Board to render a decision on the appeal, the file may be remanded to the examiner by a Director-ordered remand pursuant to Bd.R. 41.35(c).  Furthermore, Proposed Bd.R. 41.35 would be amended so that the Board could not return or remand an application for consideration of an information disclosure statement or a petition filed while the Board possesses jurisdiction.

I know we are all weary, particularly with these never-ending Appeals Rules proposals, but for those who wish to comment, the deadline for receipt of written comments on the proposed rulemaking is 5 p.m. Eastern Standard Time on January 14, 2011. Written comments should be sent by electronic mail message to BPAI.Rules (at) Comments on the proposed rulemaking may also be submitted by mail addressed to: Mail Stop Interference, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313– 1450, marked to the attention of ‘‘Linda Horner, BPAI Rules.’’ For more information please contact Linda Horner, Administrative Patent Judge, Board of Patent Appeals and Interferences, by telephone at (571) 272–9797, or by mail addressed to: Mail Stop Interference, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Linda Horner.


Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

6 comments so far.

  • [Avatar for Gene Quinn]
    Gene Quinn
    November 16, 2010 05:52 pm


    I apologize. I should have mentioned you as being a part of the fight along with David.


  • [Avatar for Gene Quinn]
    Gene Quinn
    November 16, 2010 05:51 pm


    Thanks for the contribution of information above. I would love to hear your substantive thoughts on the Notice. Will you be following up and commenting?

    On another note, a well deserved tip of the hat (once again) to you!


  • [Avatar for Richard Belzer]
    Richard Belzer
    November 16, 2010 12:53 pm

    An important point to add to David Boundy’s comment:

    PTO should be commended for apparently following the Paperwork Reduction Act this time. What David and I discovered in 2008 is that there had been no valid OMB control number for then-existing paperwork burdens. That meant PTO was demanding information in violation of law. These violations persisted until OMB finally issued a clearance for these pre-2008 paperwork burdens, I believe in December 2009.

    Applicant/appellants whose appeals were submitted prior to that date and denied or otherwise treated adversely may have legal recourse under the law.

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    November 16, 2010 10:24 am

    Another great accomplishment of PTO Director Dave Kappos.

    One minor point just made by a reexam expert is that staying appeal dates for petition decisions on alleged new grounds of rejection may not be a good idea for reexamination appeals, which are already being delayed too often. It could be used for more delay. He notes that inter partes reexams are excluded here, but not ex parte reexams.

  • [Avatar for David Boundy]
    David Boundy
    November 15, 2010 09:46 pm

    Gene –

    A small elaboration of your time line.

    What the law requires is (slightly oversimplified, and reflecting practical reality that wise agencies build into their planning, as well as legally-required sequencing) –
    – a 60-day Paperwork Reduction public comment period running concurrently with the comment period for the Notice of Proposed Rulemaking
    – a 30-day Paperwork notice for further comment on the final rule, and 30 days for OMB review (a wise agency starts this at least 60 days before final rule publication, so that OMB can review the comments and approve, disapprove, or order changes — most agencies complete this before final publication to avoid egg-on-face of having to recall a final rule)
    – THEN comes the final rule, AFTER OMB approval

    (The OMB web site has the time line in nice picture book form ).

    In contrast, PTO attempted to run the Appeal Rule through the time line you describe –
    – July 2007 – Notice of Proposed Rulemaking, with no Paperwork comment period
    – June 9, 2008 – a 60-day comment period, which could have cured the legal breach had PTO allowed 90 days or so for the law to run its course, but instead they cut the 60-day comment period off after one day, by ….
    – June 10, 2008 – final rule notice
    – Oct 8, 2008 – 30-day notice, that starts a 60-day review period that (a wise agency) runs before final, not after, with a number of further procedural defects
    – Dec. 5, 2008 – Dudas signs the Federal Register Notice, and could have published it one or two days later, but instead he let it go five days to get the last full measure of torture against appellants by waiting until …
    – Dec. 10, 2008 – PTO runs the Federal Register Notice suspending applicability

    Did the PTO learn its lessons? Apparently some, not others. There are several major legal rule making procedure in this Notice. Ones that the PTO lost in Tafas. Others that replicate the errors that caused OMB to direct PTO to withdraw four other major rules.

    However, the difference in attitude is really apparent. And that is very encouraging.

    David Boundy

  • [Avatar for Just visiting]
    Just visiting
    November 15, 2010 04:20 pm

    Very interesting rules. I skimmed over them today and I’ll be diving into them in greater detail shortly.

    First take — much more friendlier to Appellants than the Dudas-inspired monstrosity of a rule package that was killed, at nearly the last moment, nearly two years years ago.