Appellate Procedure and
Petition Practice
By:
Michael A. Leonard II
Overview
Appeals and Petitions can be an effective way to
advance prosecution where Applicant and the Examiner
are unable to reach agreement and prosecution before
the Examiner, without third party intervention, seems
unlikely to be fruitful
This presentation covers three types:
1.
2.
3.
Pre-Appeal Brief Requests for Review (PABRFRs);
Full appeals; and
Petitions
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
Types
Full Appeal
•
•
•
•
Appeals cover rejections
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 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)
•
•
•
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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
Full Appeal
A Notice of Appeal must be filed either
concurrently with or prior to filing of 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:
1. Within two months of filing of the Notice of Appeal;
or
2. If filed subsequent to a PABRFR, within one month
of a Panel Decision for the PABRFR.
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
i.
ii.
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.
Requirements for Appeal Brief
(cont.)
iii.
iv.
v.
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-plusfunction 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.”
Requirements for Appeal Brief
(cont.)
vi.
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.
vii. 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.
viii. Claims Appendix. This appendix only contains claims that
are actually involved in the appeal.
ix. Evidence Appendix. Any affidavit evidence or other
evidence entered by the Examiner and relied upon by
Applicant should be included here.
Requirements for Appeal Brief
(cont.)
x.
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.
Consequences for NonCompliance
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)
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
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:
1.
2.
Request that prosecution be reopened before the Examiner; or
Maintain the appeal by filing a Reply Brief.
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 nonadmitted 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
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
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
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
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:
1. Identify the presence or absence of clearly improper
rejections based upon error(s) in facts; or
2. Identify the omission or presence of essential
elements required to establish a prima facie
rejection.
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
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
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
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
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