Update on Re-opening Prosecution

As mentioned in a previous post, we filed an Amicus brief with the Federal Circuit supporting the notion that they reconsider their decision regarding MPEP 1207.04.

Another Amicus has also filed a brief in support of Hyatt’s request, and the USPTO has filed their responsive brief. The USPTO’s brief has not yet been fully analyzed, but an initial reading illustrates their continued attempt to claim that there was no substantive change in 2005. They conveniently leave out the part that takes the choice away from the applicant, and attempt to explain away the difference as merely one of form:

The only relevant change from 2004 to 2005 was that, under the newer version, the applicant files a second “notice of appeal” and a new brief—with a credit for the previously paid appeal fee—rather than filing a “supplemental brief” (also a new brief)—with that same credit.

However, refiling an notice of appeal must mean that the applicant’s appeal is starting over - why else would a new notice of appeal be needed? Whether or not the notice of appeal fee is credited does not change the fact that the applicant had initiated an appeal which was taken away from them by the Office through no fault of their own (other than writing convincing arguments). An appeal starts with a notice, and so that change is substantial and significant.

More to come but at first glance this appears to be a gaping hole in in the USPTO’s position.