On June 10, 2008, the U.S. Patent and Trademark Office (USPTO) issued new rules regarding the filing of appeal briefs, which go into effect on December 10, 2008. (See Federal Register, Vol. 73, No. 112 for a full statement of the new rules.)
The new rules feature a substantial change to the content of Appeal Briefs. No longer is an appellant required to file sections directed to a Status of Claims or Summary of Claimed Subject Matter. However, the rules require the following new sections to be added to the appeal brief:
Jurisdictional statement—The appeal brief must include a statement of the statute under which the appeal is taken, the date of the decision from which the appeal is taken, the date the notice of appeal was filed and the date the appeal brief is being filed. If a notice of appeal or an appeal brief is filed after the time specified in the rules, the appellant also would have to indicate the date an extension of time was requested and, if known, the date the request was granted.
Table of contents—Appellants must have a table listing each section in 37 CFR § 41.37(e) and the page where each section begins in the Appeal Brief..
Table of authorities—The appeal brief must include a listing of court and administrative decisions (alphabetically arranged), statutes and other authorities, along with a reference to the pages of the appeal brief where each authority is cited.
Statement of facts—Appellants will set out in an objective and non-argumentative manner the material facts relevant to the rejections on appeal, preferably in numbered paragraphs. A fact would be required to be supported by a reference to the page number of the Record. Where appropriate, the citation should also be to a specific line or paragraph and to a drawing figure and element number of the Record. Statements of facts should be set out in short declarative sentences and each sentence should address a single fact.
In addition, in the Argument section, where an argument has previously been presented to the examiner, the appellant would have to identify where any argument being made to the Board of Patent Appeals and Interferences (the Board)was made in the first instance to the examiner. For arguments not previously made during the course of prosecution, an appellant is required to state that the arguments are new.
Appendix—The appendix would additionally include a claims section, claim support and drawing analysis section, means or step-plus-function analysis section, evidence section and related cases section.
Attorneys are urged to comply with these requirements. The Board may impose sanctions on appellants that fail to comply with an order, advance or maintain "a misleading or frivolous request for relief or argument" or engage in "dilatory tactics."
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.