BNA (subscription service) is reporting on the BPAI Roundtable held on January 20. The primary discussion concerned the new appeal brief rules. PTO Deputy Director Sharon Barner and the BPAI’s Chief Administrative Patent Judge Michael Fleming represented the PTO, along with initial comments from Director Kappos.
The participants were generally positive about the new PTO administration’s transparency in the process, but, in the future, requested that the PTO include the purpose behind each new rule in the appeal brief requirements.
The PTO officials asked if they should institute briefing rules like other appellate tribunals that would include page limits, jurisdictional statements, tables of contents and authorities. The participants in the discussion reminded the PTO that the BPAI is not an Article III court, but is rather an administrative agency. Its rules should comply not with those of the courts, but with the Administrative Procedure Act (APA). Other administrative tribunals have much less onerous rules than those proposed by the PTO.
The largest source of disagreement with the proposed rules was the rule that requires that briefs contain “arguments to explain Examiner error.”
The “argument” shall explain why the examiner erred as to each ground of rejection to be reviewed. Any explanation must address all points made by the examiner with which the appellant disagrees. Any finding made or conclusion reached by the examiner that is not challenged will be presumed to be correct.
This is true even if the examiner’s position is contrary to controlling law. The participants urged the BPAI to instead institute a standard of de novo review where no deference is given to the examiner’s position. The goal should be to get the decision right, not to penalize applicants who don’t address every point the examiner made.
Barner and Fleming gave some sobering statistics on appeals. The average pendency from the time of filing a notice of appeal until a decision by the BPAI has risen from 27.5 months at the end of FY2008 to 29.3 months at the end of FY2009 and is expected to rise by several more months by the end of FY2010. The average pendency from the time an appeal is docketed by the BPAI to a decision rose from 7.7 to 9.9 months from FY2008 to FY2009 and is expected to rise to 14.4 months by the end of FY2010. The cause of this, of course, is the substantial increase in the number of appeals filed.
Director Kappos stressed that it is necessary to determine the cause of the increased number of appeals and to try to address this issue at the examiner level as part of his overall quality initiative to reduce patent pendency. He would like to see examiners and applicants work together to find patentable subject matter. At this stage, it appears that at times the examiners and applicants are not communicating well. He also recognized several major changes in the law that have contributed to the increased number of appeals.
One of the reasons for the nearly 20 months between the filing of the Notice of Appeal and the docketing of the appeal by the BPAI has been reported by Patently-O: 40% of decided cases included at least one applicant brief that was determined to be defective. Many of the defective briefs are so-called based on very questionable grounds. Some briefs did not list the canceled or withdrawn claims, some did not reference a co-pending application, some did not list each ground for rejection under a separate heading. And the PTO wants to add to the technical requirements of appeal briefs.
What the PTO Should Do
The goal of the PTO needs to be to reduce the number of appeals filed. Director Kappos has some good suggestions here for getting examiners to work together with applicants. Supervisory Patent Examiners (SPEs) and primary examiners who sign office actions need to take some responsibility for the documents they are signing. I have seen way too many office actions recently that were sloppily done and did not comply with the MPEP requirements. The examiners were not primary examiners so they required a more senior examiner to sign them. The senior examiners should be required to point out deficiencies in the office actions rather than simply rubber stamping them to get them out.
Next, the PTO needs to get appeals on its docket and have the BPAI make the correct decision quickly and efficiently. It should not take 20 months to complete the briefing process due to rule technicalities. I understand that the Board needs certain information in the appeal briefs to decide cases, but sending briefs back based for the reasons cited above is ridiculous. The Board needs to make sure it is deciding the cases correctly, rather than giving examiners wide berth to make errors that may be overlooked by applicants.
I rarely advise clients to appeal cases because of the state of the BPAI. Appeals take too long and are too costly to justify in most cases. There are times, however, when an applicant has a particularly important invention and the examiner is simply being unreasonable and unwilling to consider the arguments being advanced, even if he is wrong on the facts or the law. In such cases, an appeal may be warranted and necessary.
It is good to see the PTO working with stake-holders to try to improve its operations.