One Microsoft Way
Redmond, WA 98052-6399
Via Electronic Mail
September 28, 2007
Under Secretary of Commerce for Intellectual Property
And Director of the United States Patent and Trademark Office
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
Attn: Fred E. McKelvey and Allen R. MacDonald
Comments on Notice of Proposed Rule Making: “Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals”
Federal Register/Vol.72, No. 145/July 30, 2007
Microsoft appreciates the opportunity to offer comments on the notice of proposed rule making relating to rules of practice before the Board of Patent Appeals and Interferences in Ex Parte Appeals published in the Federal Register on July 30, 2007. The USPTO states that the changes are needed to permit the Board to handle an increasing number of ex parte appeals in a timely manner, and has set forth five objectives for the proposed rule changes: (1) provide reviewers with a clear and complete statement of an appellant’s position at the time of filing an appeal brief; (2) minimize the pendency of appeals before the Office; (3) minimize the need for lengthy patent term adjustments; (4) provide uniform treatment of requests for an extension of time filed after an appeal brief is filed; and, (5) make the decision-making process more efficient. In concert with our comments below, we believe the USPTO objectives of providing the parties with clear and complete positions at the time of the appeal, minimizing pendency and lengthy patent term adjustments, providing uniform treatment, and making the process more efficient is laudable and deserving of greater consideration. While we appreciate the USPTO’s efforts to make the appeal process more effective and timely, we fail to see a showing by the USPTO in the proposed changes how such objectives are accomplished, and thereby do not support the changes as proposed.
In the past few years, Microsoft has grown to be one of largest customers of the USPTO. In 2006, we had the third largest number of published patent applications by the USPTO and are currently prosecuting well over 15,000 pending applications. We employ the services of over 100 patent practitioners around the country and were the 13th largest recipient of U.S. patents for 2006.
As one of USPTO’s largest patent applicants, Microsoft has continuously supported a variety of USPTO efforts to improve patent quality and enhance examination efficiency. By way of example, Microsoft has supported fee adjustments and full access to fee revenue to fund examination initiatives, and proactively embraced the electronic filing and prosecution of patent applications. It is with this spirit of partnership and cooperation that Microsoft is using this opportunity to comment on these proposed changes to the practice before the Board of Patent Appeals and Interferences (BPAI) in Ex Parte Appeals.
As set forth by the USPTO in the background and rationale for the proposed rules, the changes propose to adopt practices similar to those of the Court of Appeals for the Federal Circuit in such a way as to allow the Board to continue to resolve ex parte appeals in a timely manner with the increasing number of appeals by providing a clear and complete statement of an appellant’s position at the time of filing an appeal brief. However, the changes as currently proposed do not adopt Federal Circuit briefing requirements which equally govern all the parties to an appeal to the Federal Circuit, do not show how the changes address the words and the intent of the statute governing the BPAI, or do not set forth how these rules make the appeal process more efficient and timely than the current rules which were put in place as recently as September 2004.
The briefing practices set forth by the Court of Appeals for the Federal Circuit apply equally to all the parties in the inter parte appeal. In contrast, the current proposals are applicable only to appellant’s briefs and are not applicable to the Examiner’s Answer, thereby potentially prejudicing positions of the appellant by placing constraints on the issues and/or arguments that may be presented. Examples include limitations on the number of pages in the argument section of appellant’s brief, which constrain the ability of appellant to effectively present all relevant arguments while, simultaneously, imposing rules that waive all arguments not addressed in the argument section of the brief.
Also, the establishment and duties of the BPAI cannot necessarily be equated with those of the Federal Circuit as inferred to a certain extent in the explanation of the proposed rules. The duty of the BPAI as set forth in 35 U.S.C. 6 in ex parte appeals is to “review adverse decisions of examiners upon applications for patents” and the proposed rules create an imposed conflict with those words when taken in the context of 35 U.S.C. 102 that a “person shall be entitled to a patent unless . . .” there is a showing of unpatentability. The statutes require that the BPAI first ascertain whether the examiner has correctly presented a prima facie case of unpatentability, and if so, then the BPAI determines if the evidence presented is of such weight to overcome the showing of unpatentability. The proposed rules really inverts that premise of the statutes by not first reviewing the decision of the examiner, but by assuming that the examiner is correct and limits the review of the BPAI to arguments of rebuttal and a showing of entitlement. Contrary to the statute, the rules shift the burden by requiring the appellant to affirmatively show the invention is patentable through mandated arguments and evidence.
Of equal or greater concern is the significant time and cost increases imposed upon an appellant to comply with the proposed rule changes without any showing or metrics in the explanation of the proposed changes of how the changes make the appeal process more effective and timely. With all the very specific formatting and additional requirements to be incorporated into a brief and the appendix content, the cost of a brief will be at least double today’s cost. There is no showing by the Office how the proposed rules will effectuate efficiency gains over the current rules that were put into effect September 2004. To reasonably justify the time and cost incurred upon appellant by the proposed changes, a significant efficiency gain should need be realized and shown by the Office.
The proposed Bd. R. 41.31(a) imposes a signing requirement for a notice of appeal. It is unclear from the explanation of the proposed rules why a signing requirement should be imposed. It requires an additional burden on applicant without identifying any particular problem created by current practice or achieves no clear benefit.
The proposed Bd. R. 41.37(n) would require an appeal brief to include a “statement of facts” that would in an objective manner set forth the material facts relevant to the rejections on appeal. While Microsoft appreciates the Office explanation for the proposed change of not expecting the Board to search the record to determine whether a statement of fact is supported by the evidence, it is not clear how this improves the appeal process over the current appeal requirements and is this just form over substance. Should there be a substantive gain to the appeal process by the formatting requirement, then one would expect to have an equal gain by such a requirement in an Examiner’s Answer.
The proposed Bd. R. 41.37(o) requiring an analysis explaining, as to each rejection to be reviewed, why the appellant believes the claims are allowable over the examiners assertion shifts the burden, as set forth in the general comments above, onto the appellant to “prove” compliance with the statutes rather than reviewing the Board’s statutory charge of reviewing the examiner’s adverse determination. While a brief should and can help guide the Board in their review of an examiner’s rejection, there should be no presumption of correctness in the examiner’s rejection as a starting position. The proposal also provides that any conclusion reached by an examiner that is not challenged is presumed to be correct. The Office fails to cite any authority of this proposition that unchallenged examiner findings are presumptively correct.
The proposed Bd. R. 41.37(o) (2) imposes a restriction that the Board would only consider arguments that are presented in the argument section of the appeal brief or the argument is waived. This limitation taken in concert with Bd. R. 41.41(d) which incorporates Bd. R. 41.37 has the potential of denying appellant the opportunity to argue an issue. Any argument which may be tangential to an issue not directly stated in the Examiner’s Answer cannot be presented to the Board since a Reply Brief under Bd. R. 41.41(d) is limited to points made in the Examiner’s Answer and the arguments must be made in the argument section or thereby waived by appellant.
Proposed Bd. R. 41.37(o) (3) would require that appellant specifically identify each point raised by the examiner and indicate where appellant previously responded to the point in the prosecution of the application. The Office indicates that this is “intended to be efficient protocols for assisting the Board in focusing on any differences between the examiner’s and appellant’s position.” While no efficiency gains are indicated by the Office, should there be a gain, the same type of requirements should be in an Examiner’s Answer with cross reference to facts or arguments raised by the appellant and where the examiner addresses the argument in the prosecution of the application.
Proposed Bd. R. 41.37(t) would require the appeal brief to contain an “evidence section” that is to include any material admitted into the record by the examiner during prosecution of the application. The section is not cost effective for the Office or for appellant since it requires the appellant to assemble all papers that are already of record in the file. With the Office’s investment in an IFW, all of these papers have been captured by the Office and are readily available to the appellant through the private PAIR and to the Board through the IFW system. If this is a mere convenience for the Board, a listing of the documents relied upon and a marker to the IFW should meet that need.
Proposed Bd. R. 41.37(v) (5) provides a page limitation on the length of the appeal brief and prohibits incorporation of arguments by reference to other papers in evidence. Since the proposed rules require that the appellant specifically and independently address each point that has been raised by the examiner in order for the issue to be reviewed by the Board, a limit on the number of pages in an appeal brief is irrational when there are no limits on an examiner’s final Office action nor on an Examiner’s Answer. Thus, the examiner is able to raise any number of issues and complexities while Appellant is left in the untenable position of waiving any issues not addressed within the set page limit. Furthermore, the page limitation appears arbitrary with no basis for the number specified, while the number of issues on appeal are not limited, nor are the number of claims to be independently addressed. Such a position appears to be contrary to the goal of providing the Board with a clear and complete view of Appellant’s position.
The proposed Bd. R. 41.41 relates to the form and content of a Reply Brief which now must conform in a similar manner to the proposed requirements for an Appeal Brief. Microsoft’s comments in response to the proposed rule changes for an Appeal Brief, as set forth above, are similarly applicable to the proposed rule changes for a Reply Brief.
Proposed Bd. R. 41.56 provides that the Board could impose sanctions against appellant for misconduct. While there may be instances of misconduct where sanctions are appropriate, there is no showing or evidence presented anywhere in the rule proposal that the current practice before the BPAI requires this type of rule. Also, the requirements for the elements to be included in the appendix section of an Appeal Brief, and this type of new provision re sanctions appear to exceed mere changes to interpretive rules or rules of practice and procedure, and would further appear to meet the requirements for a Regulatory Flexibility Act analysis.
Microsoft appreciates the Office’s efforts to continue working to address the quality of the appeal process, minimizing pendency and lengthy patent term adjustments, providing uniform treatment, and making the process more timely and efficient, and we are committed to working with the Office to address these common concerns. We thank the USPTO for considering our views and should you have any questions concerning our response, please contact us at the address below. We are always available to assist the USPTO in any further partnership needs.
D. Bartley Eppenauer
Chief Patent Counsel
Associate General Counsel
IP & Licensing - Patent Group
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