Failure to file an empty appendix can cost you time in patent appeal?

Carl Oppedahl writes:

In recent months we have noticed a new practice by USPTO regarding appeal
briefs. It seems clear the Examiners are being trained to scrutinize each
appeal brief and to identify at least one real or perceived defect in the
brief.

Recall that under Rule 41.37, one of the required sections in any appeal brief is a "Related Appeals and Interferences" section. Rule 41.37 also says that if there are any decisions rendered by a court or the Board in the proceeding identified in the "Related Appeals and Interferences" section, the filer is required to provide copies of those decisions in an appendix.

Of course, if there are no related appeals or interferences, and if the brief says this, then it is impossible for there to be any decisions, and thus there cannot be any such appendix.

Notwithstanding this, in two of our recent appeals in which we said in our brief that there were no related appeals or interferences, we received a Notification of Non-Compliant Appeal Brief stating that our brief was defective for failure to provide this appendix containing the (non-existent) decisions.

We telephoned the Examiner in one of the cases. She cheerfully explained that our mistake was in failing to provide an empty appendix. In each case we filed an empty appendix, and the problem went away.


Carl makes a number of recommendations, including use of
Partridge and that one should
--> prepare the response to the Notification from the USPTO without delay
--> file the response instantly using EFS-Web
--> check IFW to make sure the response is there