Terms and Concepts
The inter partes reexamination rules impose a strict page and word limit on the length of patent owner and third party requester submissions during reexamination at the CRU and on appeal to the BPAI. These limits can have a significant impact on party’s ability to effectively advocate its positions.
The rules impose a 50-page limit on Office action responses filed by the patent owner and written comments filed by the third party requester (37 C.F.R. § 1.943(b)). There is no corresponding limit set on the length of the reexamination request or the Office action issued by the examiner. The trend in inter partes reexamination appears to be the filing of lengthy reexamination requests. In many cases, the reexamination request exceeds 500 pages and it is not uncommon for the first Office action itself to exceed the 50-page limit.
The motivation behind the page limit restriction appears to be efficiency. The page limits are viewed by the PTO as forcing prosecuting attorneys to economize their arguments, thereby reducing the number of pages that an examiner must review in each Office action cycle. However, many argue that divorcing the page limit requirement from the size of the request and the extent of the Office action prejudices both the patent owner and the third party requester. In cases having lengthy and complex Office actions, these page limits may not afford the patent owner or third party requester the ability to argue adequately all the issues raised in the reexamination request or in an Office action.
The patent owner and the third party requester can petition OPLA for an enlargement of the page limits. However, the grant of an extension is not automatic. Many practitioners also argue that the parameters for when to request an extension and what grounds are sufficient to obtain an extension are unclear and inconsistent across reexamination proceedings.
The examiner makes the determination of whether a filing exceeds the 50-page limit. When expert declarations are used by either party, the examiner must determine whether a page in the declaration counts towards the 50-page limit. Practitioners argue that the standards for making this determination are unclear and are also not consistent across CRU examiners. A need exists for guidance from the PTO on this issue.
Limits also are applied to appeal briefs. On appeal to the BPAI, appellants are limited to thirty pages or 14,000 words, excluding appendices of claims and reference materials such as prior art references. All subsequent briefs are further limited to 15 pages or 7,000 words. The MPEP waives the pages limits for the table of contents pages, the table of case law pages, and the pages of the claims (but not claim charts applying the art to the claims). OPLA has recently ruled that the exclusion of reference material from the word or page limits applies to the following components of briefs: Real Party in Interest, Related Proceeding Appendix and Certificate of Service (In re Farmwald, Inter Partes Reexamination Control No., 95/001,905 (May 27, 2010 Decision)).
The differing limits on opening briefs in an appeal will, in some cases, hamper patent owner relative to requester. Where a patent owner is not cross-appealing, such as in the case of it having all claims confirmed in reexamination, the only brief a patent owner may file is the response brief, which is entitled to half of the length of the opening brief.
Complicating matters, the MPEP provides that expert opinion as to whether the claims are anticipated or rendered obvious in view of the prior art are counted in the page limits (MPEP 2667). In addition, parties attempting to overcome the page limit hurdle by incorporating by reference more detailed argument do so at their own peril. The rules provide that “Any arguments or authorities not included in the [Appellant’s] brief …will be refused consideration by the Board” (37 C.F.R. § 41.67(c)(1)(vii)). In Ex Parte Fleming, the BPAI refused to consider arguments that appellant incorporated by reference (2010 WL 964711 (Appeal 2009-5123, Mar. 15, 2010)). In Fleming, the appellants sought to raise an argument on appeal that it raised during prosecution, stating: “[a] detailed presentation of this argument cab [sic] be found in Applicant’s response dated May 8, 2007, and is not reproduced herein” (Id.). The BPAI responded: “we decline to consider this argument” (Id.).
How can the PTO balance the need for economy while protecting the right of the patent owner to protect its property right? Can the PTO sua sponte waive the page limit rule when an Office action exceeding a specific length is issued?
This issue is exacerbated by the need to create a full and complete factual record of the story of the invention and the relevant prior art to overcome obviousness rejections. In the patent interference context, an “Evidence Appendix” is used to create the factual record and is not counted as part of the page limits for attorney argument. The PTO in the interference context takes a liberal view of what is allowed in the Appendix that often runs thousands of pages in length. Many argue that the CRU should adopt a corresponding approach to the page limit in reexaminations.