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[khazzah]

I ran across a file history in which a new appeal brief was filed way after the 6 month deadline for the response to OA. To my surprise, the BPAI referenced only the late appeal brief, and made no mention of the first. Seems to me the late appeal brief should not have been entered in the record, and only the first should have been considered.

Now, unusual facts are present, since new counsel got involved after the first appeal brief. I'm wondering if anyone is aware of rules which say the late appeal brief is acceptable because of the entrance of new counsel. [Note: haven't spent any time at all researching this issue, I just wanted to see if anyone here knew something off the bat.]

Here's the timeline of unusual facts

1. (Original) appeal brief was timely filed after a final Office Action
2. A month later, counsel who filed the (original) appeal brief filed a Petition to Withdraw
3. The Petition to Withdraw was approved.
4. 11 months after the final OA was issued, a Power of Attorney was filed naming new counsel
5. 12 months after the final OA was issued, a (New) Appeal Brief styled "Supplemental Appeal Brief" was filed by new counsel
6. Examiner's Answer
7. Decision by BPAI

[Dazed-n-confused]

Possibly you've already considered this, but the filing of the amended brief could still have been within the time limits, as long as some statement was on the record indicating the applicant wants extension fees to be charged where needed.  I can't tell from your fact pattern when the Notice was filed.  But a Notice filed at the 6 month deadline will put a brief due, with 5-month extension, at 13 months after the final OA.  Plus possibly a few extra days if the Notice is filed USPS on the 6 month deadline.

But going to the principle of your question, I don't know of anything that permits sua sponte filing of amended/supplemental briefs.  We've all seen briefs amended pursuant to non-compliance notice, and (rarely) you'll see the Board ask for additional briefing on some particular point, but those are both provided for in the CFR.   

Possibly § 41.4(b)(2) could be viewed as a catch-all that permits (but doesn't require) the Board to take the amended/supplemental Brief if it desires?

"(b) Late filings. ....(2) A late filing that does not result ...application becoming abandoned ....will be excused upon ... a Board determination that consideration on the merits would be in the interest of justice."

[khazzah]

Possibly you've already considered this, but the filing of the amended brief could still have been within the time limits, as long as some statement was on the record indicating the applicant wants extension fees to be charged where needed.  I can't tell from your fact pattern when the Notice was filed.  But a Notice filed at the 6 month deadline will put a brief due, with 5-month extension, at 13 months after the final OA.  Plus possibly a few extra days if the Notice is filed USPS on the 6 month deadline.

Yeah, you're right, my bad. It turns out the Supplemental was -- procedurally -- a brief filed in response to a Notice of Non-Compliance. That, coupled with a Pre-Appeal Brief that I missed, explains why the really long timeline actually does fit within the statutory deadline.

But going to the principle of your question,

Yes, thanks, you correctly divined the real point of my question.

OK, so I was a little off on my original question ... but my new understanding brings up another question: can you file a completely new set of arguments in response to a Notice of Non-Compliant Appeal Brief?

Because that's what happened here. Seems like if that's allowed, you could game the system by intentionally screwing up some formality of the Appeal Brief, giving you time to further refine your arguments while you wait for the Notice of Non-Compliance.

As far as I can tell, the only rule that prevents this behavior is the attorney ethics canons that says "no paper is filed for purpose of delay." Which is not something most folks think a lot about.

[patentatt]

Possibly § 41.4(b)(2) could be viewed as a catch-all that permits (but doesn't require) the Board to take the amended/supplemental Brief if it desires?

"(b) Late filings. ....(2) A late filing that does not result ...application becoming abandoned ....will be excused upon ... a Board determination that consideration on the merits would be in the interest of justice."

Very interesting - I was previously aware of that rule!

OK, so I was a little off on my original question ... but my new understanding brings up another question: can you file a completely new set of arguments in response to a Notice of Non-Compliant Appeal Brief?

Because that's what happened here. Seems like if that's allowed, you could game the system by intentionally screwing up some formality of the Appeal Brief, giving you time to further refine your arguments while you wait for the Notice of Non-Compliance.

As far as I can tell, the only rule that prevents this behavior is the attorney ethics canons that says "no paper is filed for purpose of delay." Which is not something most folks think a lot about.

This is a question that I have wondered about for a long time.

[Dazed-n-confused]

It turns out the Supplemental was -- procedurally -- a brief filed in response to a Notice of Non-Compliance. That, coupled with a Pre-Appeal Brief that I missed, explains why the really long timeline actually does fit within the statutory deadline.

I had a PABR that dragged out so long that my brief was not due (in regular, non-extended timeline) for something like 17 months following my NOA.

...brings up another question: can you file a completely new set of arguments in response to a Notice of Non-Compliant Appeal Brief? ... .... you could game the system by intentionally screwing up some formality of the Appeal Brief, giving you time to further refine your arguments while you wait for the Notice of Non-Compliance.

As far as I can tell, the only rule that prevents this behavior is the attorney ethics canons that says "no paper is filed for purpose of delay."

IIRC this aspect has been discussed briefly in these fora but I'm not sure the participants got any further than your "no delay" analysis.  In short, an unethical practitioner (or pro-se) could try to game the system this way. 

But I'd think they'd be taking their chances now that the Board itself has taken on the duty of technical compliance review. 

Question for any reading - haven't your "non-compliance" rates reduced considerably of late?  I used to get the most ludicrous (spurious) non-compliance notices.  Sometimes even serially contradictory, such as where the Examiner would gig me for not having fulsome enough of a claims summary, and then the amended brief would get gigged by the Examiner's SPE for the summary being non-concise.  (And I had in fact only increased the text of the claims summary by a couple of lines.)  But now, most of my briefs have been passing through technical review without complaint.

[Dazed-n-confused]

Possibly § 41.4(b)(2) could be viewed as a catch-all that permits (but doesn't require) the Board to take the amended/supplemental Brief if it desires?

"(b) Late filings. ....(2) A late filing that does not result ...application becoming abandoned ....will be excused upon ... a Board determination that consideration on the merits would be in the interest of justice."

Very interesting - I was previously aware of that rule!

You were??