In the past month, two complementary but distinct criticisms of the ex parte appeal process have emerged. They deal with the way the Board treats appeals where the Examiner embellishes/modifies the rejections in between the last rejection on the record but before forwarding to the Board. These are serious criticisms that deserve serious attention. As people learn more about current Examiner practices, expect change at some level at the PTAB.
The first criticism comes from Bill Smith and Allen Sokal on Law360 in a piece titled “A Way to Improve PTAB Ex Parte Appeals.” In the article, the authors decry the practice of examiners at the Examiner Answer stage. Examiners will copy and paste the written rejection from the appealed office action into the “statement of the rejection” section and state new facts and reasons in support of the rejection in the “response to arguments” section.
In essence, the Examiner gets to clean up the rejection before being heard by the Board. And for the most part, the Examiner can get away with introducing new analysis and new facts (new ground of rejection) without reopening prosecution. Then the Board decides the enhanced rejections as if it were part of the original rejection being appealed. According to the authors, this practice “injects unpredictability into the board’s decision since the appeal brief addressed the as-stated record rejection, not the rejection based on the expanded facts and reasons.”
The solution that the authors propose: limit its review of the merits to the facts and reasons in the as-stated rejections in the “statement of rejection” section of the examiner’s answer. If an Examiner raises anything else in the Examiner Answer, do not let the Board give it weight.
The second criticism is interrelated and comes from a recent lawsuit Odyssey Logistics & Tech. Corp. v. Andre Iancu, (E.D. Va. May 11, 2018). This lawsuit challenges the above-noted practice at a more fundamental level by hitting against the the Amended Ex Parte Appeal Rules enacted on January 23, 2012.
The complaint cites U.S. Patent Application No. 11/458,603 as an example of the appeal process running afoul. In this Examiner Answer, the Examiner, for the first time, apparently cited three patents as new evidence to be considered in support of his rejection. The Examiner’s Answer also allegedly included changes in the Examiner’s rationale for his rejections.
While this fact pattern is eerily similar to the fact pattern proposed by Sokal and Smith, here the complaint alleges that these new grounds of rejection would not be proper but for the Amended Ex Parte Appeals Rules and their retroactive application to the ‘603 application. According to the complaint, the Amended Rules included changes to 37 C.F.R. §41.35(a) that change the start of the Board’s jurisdiction. Modifications were also allegedly made to the provisions for new grounds of rejection in 37 C.F.R. §41.39, and new definitions were provided for the terms “Evidence” and “Record” in 37 C.F.R. §41.30.
According to the complaint, the Examiner, the official whose rejection is challenged in the appeal, will always have the jurisdiction necessary to change the rejection challenged on appeal or provide entirely new grounds of rejection, and may add arguments, dictionaries, or other documents to the record, even after the applicant has filed an appeal brief. 76 Fed. Reg. at 72276-78.
The complaint then proceeds to raise a very interesting point that is consistent with the points raised by Sokal and Smith.
In this event, the decision rendered by the PTAB is not a decision affirming or reversing the original rejection(s) challenged on appeal but instead is a decision on the new and different grounds of rejection. If the PTAB’s decision is on different grounds of rejection, the applicant’s right to obtain a patent term adjustment is frustrated since there is no reversal of the original rejection on the written record. See 35 U.S.C. §154(b)(1)(C). Therefore, the Amended Jurisdiction Rule interferes with applicant’s statutory right to appeal and to obtain a patent term adjustment if the appeal is of a rejection that should be reversed.
In reviewing tens of thousands of final decisions at the PTAB, we at Anticipat.com confirm the unpredictability in how rejections are decided (More on this in a forthcoming piece). Being a relatively obscure procedure in a relatively dry practice, this issue does not get too many headlines. But as a new administration seeks to foster greater predictability and strength to the patent system, watch for this issue to become more prominent with some sort of change in the horizon.