Sunday, April 11, 2010

BPAI provides guidance on effective appeal briefs

Last week I attended the first annual BPAI conference, a one-day event hosted in Arlington by the PTO. The conference featured presentations by Michael Fleming, Chief Judge at the BPAI, and David Kappos, Director of the PTO. The conference also featured several panel discussions with various BPAI judges (ALJs) and another panel discussion with Chief Judge Michel and Judge Rader of the Federal Circuit. You can get a copy of the agenda here and all the presentation materials here.

Since I am a self-avowed patent geek who appeals a lot of cases, I found all the discussions to be interesting. But the one that will impact my practice the most was the panel discussion on effective brief writing.

In fact, I feel strongly that every patent practitioner could benefit from reading the BPAI's paper on effective brief writing (available here). Even if you never appeal, wouldn't you like to make persuasive arguments in front of the Examiner? And even if some Examiners don't properly consider arguments, wouldn't you like to persuade those that do?

Here are the most important tips I learned from the BPAI's discussion of effective brief writing:
  • Group your claims effectively. If you argue claims as a group, make sure all claims in the group actually share the feature you're arguing. Also, don't bother "arguing separately" if you're actually going to repeat the same argument about the same limitation.
  • Don't make conclusory arguments. For example, if you argue "the reference doesn't teach X," then explain why.
  • Use the proper legal standard. For example, "non-analogous art" is a two-pronged test, but some Appellants address only one prong. 
  • Don't make arguments that are irrelevant to the issues in the case. [Comment by KGH: the Board didn't expound on this one, but I immediately thought of teaching away in the context of anticipation, which is one of my pet peeves.]
  • Don't cite to the MPEP. Cite to statute and/or case law instead.
  • Don't bring up petitionable issues (e.g., finality of an Office Action, new arguments in Examiner's Answer), because they're not something that the Board has the authority to decide.
  • Acknowledge issues of claim construction. If your argument is really about claim construction, make that clear, and either advocate a claim construction or at least explain why the Examiner's construction is unreasonably broad. In many cases, the Appellant fails to address claim construction, and simply argues "Reference's X is not claimed Y", without considering that a broad interpretation of the claim element Y really does read on X in the reference.


  1. The part about not citing the MPEP really surprises me. The examiners are supposed to comply with the MPEP, so I thought it would suffice to cite it. Oh, well. Maybe I'll just cite the MPEP along with case law and statute to cover all bases.

  2. >The examiners are supposed to comply with the

    I think the Board's thinking here is that you're no longer in front of the Examiner, you're in front of the Board. The MPEP is not applicable, in and of itself, to the Board.

    This presents a dilemma for practitioners who think a) Examiners pay more attention to the MPEP than to case law and b) the Appeal Brief is written as much for the Examiner as it is for the Board. So cite case law and annoy the Examiner, or cite the MPEP and annoy the Board.

    Maybe you have the right angle: cite them all.