The Office published a notice of proposed rulemaking on July 30 2007, which elicited comments from organizations including the American Intellectual Property Law Association (AIPLA) and the Intellectual Property Owners association (IPO), as well as companies such as Microsoft, Eli Lilly and 3M.
Many of the comments were very critical of the new requirements, emphasizing, among other issues, the increased cost burden placed on appellants. In its comment letter, AIPLA said: “Some of the proposals...will have the effect of needlessly increasing the burdens and costs to applicants in pursuing an appeal rather than bringing forth information that is appropriate to facilitate an effective and efficient resolution of issues presented to the Board.”
Two of the most contentious provisions in the new rules, which will take effect on December 10 2008, include the Statement of Fact section and the imposition of a 30-page limit on briefs.
The Statement of Fact section requires the appellant to “set out in an objective and non-argumentative manner the material facts relevant to the rejections on appeal, preferably in numbered paragraphs”. The rule also calls for the use of “short declarative sentences”, each of which “should address a single fact”. Many feel that this poses an increased risk of inequitable conduct charges, since appellants may be forced to state facts that could be interpreted as subjective or taken out of context in future litigation.
“The Statement of Fact section scares the hell out of me,” said Ernest Linek of Banner & Witcoff. “It requires you to list facts without arguing and you have to do that for every single rejection. It’s going to be a nightmare. Any mistake could come back to haunt you.”
However, in the Discussion of Comments section of the Final Rule, the USPTO said:
“The Office is not unsympathetic to some of the concerns expressed [regarding inequitable conduct]. However, it is also true that a patent file serves a public notice function. To the extent that an applicant has to explain the meaning of its claims, etc, to the Board to secure a reversal, no applicant should be concerned. The examination process should be a transparent process where prosecution reveals much about the scope and meaning of a patent. Patent prosecution is not a procedure whereby an applicant should be allowed to manoeuvre during prosecution only to surprise the public when the patent issues. For these reasons, it is difficult to see why an applicant would want to resist providing the information the Board needs to determine whether an examiner erred.”
Equally troubling to patent practitioners is the provision requiring a 30-page limitation on briefs, which Linek said will make the process of drafting briefs much more arduous and expensive. “The burden on the attorney is huge,” he said. “It’s not bad if you’ve litigated patents - it’s just like a brief that goes to the CAFC. But for any practitioner with no court room experience this will be totally foreign to them.”
For this reason, many feel the new rules are especially unfair to small inventors and boutique firms, who may not have the resources or experience necessary to comply with the new procedures.
One of the more unusual changes is the requirement of a 14-point typeface rather than the more customary 12, which Linek says is rooted in research contending that 14-point is the font of choice for people ages 40 and over.
This, coupled with other provisions requiring annotated copies of each claim and an explanation that must include specific examples and citations as to where and how the examiner erred in his/her rejection, makes the 30-page limit even more restrictive.
“The more stuff you have to cite to the record, the more pages it chews up,” said Linek. “They want you to focus on how the examiner made an error now rather than the propriety of the rejection itself. It’s making us use a lot more words in a lot less space”, he said.
The USPTO said in a statement released on Monday that the new rules will “streamline the appeal process and lead to more timely Board decisions”. USPTO director Jon Dudas said: “These new rules will benefit both the patent community and the USPTO by fostering an ex parte appeals process with improved efficiency and clarity.”
But Linek and others in the patent community contend that the backlog of appeals at the BPAI has more to do with a shortage of resources than an inefficient procedural system.
“They need to add more resources to the Board,” said Linek. “Under the KSR standard of obviousness, examiners are issuing more rejections and generating more appeals. We predicted this.”
