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USPTO Publishes New Rules regarding Ex Parte Appeals Before the Board of Patent Appeals and Interferences
37 CFR Part 41, [Docket No. PTO–P–2007–0006], RIN 0651–AC12, 06/10/2008
Basic Information
The Department of Commerce’s United States Patent and Trademark Office (USPTO) has published in the Federal Register new rules that seek to improve the process of ex parte appeals before the USPTO’s Board of Patent Appeals and Interferences (BPAI), an agency announcement said. According to the USPTO, the final rule provides new requirements and clarifications that will help streamline the appeal process and lead to more timely BPAI decisions.
Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas said, “These new rules will benefit both the patent community and the USPTO by fostering an ex parte appeals process with improved efficiency and clarity. By exchanging information and crystallizing the issues of the dispute earlier in the process, the result will be more streamlined appeal process and more efficient decision-making.”
The amended rules make clear that the BPAI is not a tribunal for de novo examination. The rules establish procedures to determine whether an appellant has established that the examiner erred. For example, the rules require the appellant’s argument shall explain why the examiner is believed to have erred as to each rejection to be reviewed. Arguments not made are waived.
The final rule requires examiners to put forward their reasons for the rejection earlier in the appeal process. Examiners will no longer provide a response to the reply brief, and new grounds of rejection are no longer permitted in examiners’ answers. In addition, supplemental examiners’ answers are no longer permitted in response to a reply brief. These changes will result in increased efficiency in the appeals process.
Under the new rules, requirements for a complete brief are clearly set forth, making it easier for applicants to ensure compliance. Briefing requirements that were not necessary for the appeal—such as the “summary of the claimed subject matter”—are no longer required. The facts and arguments required in the brief are focused on distilling the issues of the dispute and establishing where the examiner erred in the rejection. Finally, page limit requirements ensure concise and clear arguments. These new requirements will result in some appeals being resolved before they reach the BPAI and will help foster timely decisions for the others.
In response to comments submitted by the public, the final rule reflects changes made to the notice of proposed rulemaking that was published in the Federal Register on July 30, 2007. For example, initial page limits set for the appeal brief and reply brief were increased by five pages to 30 and 20 pages, respectively. In addition, the evidence appendix no longer requires the submission of duplicative records beyond that required by the current rules.
Finally, the amended rules improve uniform enforcement of the rules. Petitions are decided by the Chief Administrative Patent Judge of the Board. Under former rules, petitions are decided by the Director of each Technology Center. The rules also allow for sanctions which may be imposed against an appellant for failure to comply with an applicable rule.
The final rule will go into effect six months from the date the rule is published in the Federal Register, and will apply to all appeals in which an appeal brief is filed on or after the effective date. Specifically, the effective date is December 10, 2008.
View a PDF of the rule.Service
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