Monday, March 22, 2010

Ex parte Frye (precedential): BPAI does not give deference to Examiner findings

Takeaway: On appeal to the BPAI, is the Examiner presumed to be correct, such that the Appellant has the burden to show error in the Examiner's position? Or does the Board review de novo, and weigh both sides using the arguments and evidence or record? The new precedential decision Ex parte Frye answers the question: the Board does not give deference to positions taken by the Examiner. Frye also explicitly states that the Board's de novo review is only of those issues specifically challenged by the Appellant in the Appeal Brief / Reply Brief.

More details: Only a few decisions a year are designated as precedential, but this one is particularly unusual, because PTO Director Kappos and Deputy Director Barner actually joined in the opinion. Kappos also posted about Frye on his blog (here). PatentlyO also covered Frye (here).

Kappos doesn't spin this as new law. Instead, his blog post says that the decision merely "clarifies the Board’s longstanding practice." But I read a lot of BPAI decisions, and Frye seems to me to be a huge change. Most of the decisions that I've read in the past year require the Appellant to demonstrate Examiner error, which suggests that indeed, the Board is giving deference to the Examiner findings. As support for this proposition, the Board generally quotes In re Kahn:
Appellants have the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).

Before Frye, prominent patent commentator Hal Wegner of Foley & Lardner had written about the Board's reliance on the "reversible error standard" issue. Wegner came to the conclusion that Kahn does  not support a presumption of Examiner correctness. See Wegner's article (here) in the IP Frontline newsletter.

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