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Tuesday Mar 09, 2010

Ex Parte Frye: BPAI’s Standard of Review of Examiners’ Rejections

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos


Today, in a precedential opinion that I was pleased to join as a panel member, the Board of Patent Appeals and Interferences clarified its standard of review of examiners’ rejections.  The opinion makes clear that “the Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue.”  This means that the Board does not give deference to positions taken by the examiner when considering an appellant’s argument specifically challenging the examiner’s findings.   


This decision clarifies the Board’s longstanding practice.  An appellant has always been required to identify, by way of argument to the Board, the alleged error in the examiner’s rejection.  And the law is clear that “the Board must necessarily weigh all of the evidence and argument” relative to any matter about which the appellant has alleged error. 


Secondly, the Frye opinion cautions, however, that “[i]f an appellant fails to present arguments on a particular issue – or, more broadly, on a particular rejection – the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection,” and such unasserted arguments may be deemed to have been waived.  This concept is hardly new to litigators or to the patent bar.  The well-established rule of “waiver” has long applied to Board proceedings.  


The well-respected principles of appellant advocacy reaffirmed in Frye are also essential to the effective functioning of a Board whose projected inventory of appeals for FY 2010 is 16,500 cases.  It would be unreasonable to expect the Board’s roughly 80 Administrative Patent Judges (APJs) to consider arguments that appellants could have raised but did not raise in the briefs.


In summary, preserving a complete de novo review on the one hand, while not diverting Board effort into issues not raised by the appellant on the other hand, preserves the right balance between thorough review and administrative efficiency.


I would like to thank our Board Judges, patent attorneys, paralegals and support staff for their hard work and for giving Deputy Director Barner and me the opportunity to sit on the Frye panel as statutory members of the Board.  I appreciate the great challenges that the judges face in tackling their inventory of appeals, and I look forward to participating in other cases that have the potential to provide greater clarity and guidance to the public and, ultimately, help our APJs do their job.



[Trackback] Ex Parte Frye , BPAI Appeal 2009-006013 (February 26, 2010) Precedential Appellant appealed a 102 rejection

Posted by Intellectual Property News on March 09, 2010 at 10:40 PM EST #

Great news Mr. Kappos, thanks. Looking forward to the April 7 appeal conference. One question I intend to raise is why the PTO is now refusing to refund the appeal fees when prosecution is reopened (seemingly the default response to appeals in many art units these days). The refusals all rationalize that "the appeal brief and notice were considered" but of course that is incorrect. The appeal fees are for the Board to review the case, not for an examiner to decide he was wrong after all and then churn prosecution by reopening, shortstopping the applicant from Board review. Absent corrective action on the epidemic of reopenings, don't you think it fair that applicants at least get their appeal fees back when it happens?

Posted by John Rogitz on March 12, 2010 at 12:18 PM EST #

Great point Mr. Rogitz. Similarly, what is the point of filing a pre-appeal brief for request when more often than not, the only people who are in the conference are the Examiner and his/her SPE. I thought the purpose of a request was to get another pair of PTO eyes on the case. We are considering dropping these to save money for clients since more often than not nothing of substance results from these requests.

Posted by Lee on March 17, 2010 at 01:59 PM EDT #

You can hope that another set of eyes look at this but that is not always the case and the original opinion stands.

Posted by on July 30, 2010 at 08:10 PM EDT #

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