Following up from yesterday’s post on the Hyatt case, some further thoughts on the USPTO’s substantive arguments against en banc review is provided below.

The USPTO focuses on the idea that not every appeal must be heard. Specifically, they point out that there are valid requirements on the applicant:

For example, per section 134(a) itself, an applicant must have “once paid the fee” for an appeal. See Panel Op. 16. The panel also recognized that the Patent Act and USPTO regulations permissibly impose time limits and requirements for the contents of an applicant’s brief. Id.; see 35 U.S.C. §§ 133, 41(a)(6), 2(b)(2)(A) & (B); 37 C.F.R. §§ 41.4, 41.35(b)(5), 41.37, 41.45; see also 37 C.F.R. § 41.31(c) (“Questions relating to matters not affecting the merits of the invention may be required to be settled before an appeal can be considered.”). An applicant’s failure to comply with these requirements precludes an applicant from having an appeal heard by the Board and in some cases results in abandonment of the application, even though the applicant has filed a “written appeal” as specified in section 6(b)(1). See, e.g., In re Riggs, 457 F. App’x 923, 925 (Fed. Cir. 2011) (unpublished) (discussing approvingly the rules that require that an appeal be “properly prepare[d]” before it reaches the Board); In re James, 432 F.2d 473, 475-76 (CCPA 1970) (holding that Court lacked jurisdiction to review Board action disposing of appeal on procedural grounds); id. at 477-78 (Rich, J., dissenting) (pointing out that an appeal may be disposed of without conducting merits review); In re Voss, 557 F.2d 812, 816 (CCPA 1977). Thus, the threshold ability to file an appeal after two rejections under section 134(a) does not amount to a right to force the Board to reach the merits of that appeal, no matter whether the applicant has complied with other requirements.

The problem with the USPTO’s argument is that it distorts the issue. The issue is not whether the USPTO can impose valid requirements - rather, the issue is that even when an applicant properly satisfies every single valid requirement, the Office should not be able to unilaterally abort the appeal. For example, if the applicant pays the required fees, the Office cannot reject the appeal on the ground that even though the fees were paid, now a new requirement is added. Here, when an applicant meets all of the requirements set by the Office, the Office is then obligated to move forward with that appeal. This is just common sense. Likewise, the idea that the USPTO can end the appeal by allowing the claims only confirms Hyatt’s position, because that makes the appeal moot by conceding that the applicant is correct - of course there is no need for PTAB review at that point.

Another part of the USPTO’s position that strikes me as incredibly improper relates to the final two sentences of their brief::

But the USPTO has stated in court that, going forward, it intends to file examiner’s answers to any appeal briefs in Mr. Hyatt’s applications. USPTO Motion for S.J., Hyatt v. USPTO, Case No. 1:14-cv -1300, ECF No. 116-1, at 10-12 (E.D.Va. filed Sept. 17, 2015). So the forward-looking relief is unwarranted.

What! So every other applicant has to continue to deal with endless appeal loops; but, in order to make this case go away the USPTO agrees to follow the law only against people willing to suffer through years of litigation! This seems to be a glaring admission from the PTO that they know their approach is improper. Plus, the unfairness to everyone else is a bureaucratic bombshell.

BTW - if you would like to read the other Amicus Brief by David Boundy, it is available here.