USPTO Streamlines Procedure for Appeal Brief Review in Ex Parte Reexamination Proceedings

The United States Patent and Trademark Office (“USPTO”) is streamlining the procedure for the review of appeal briefs in ex parte reexamination proceeding appeals to increase the efficiency of the appeal process and reduce pendency of appeals.

The USPTO explained that the Chief Judge of the Board of Patent Appeals and Interferences (“BPAI”) or his designee (collectively, ‘‘Chief Judge’’), will have the sole responsibility for determining whether appeal briefs filed in ex parte reexamination proceeding appeals comply with the applicable regulations, and will complete the determination before the appeal brief is forwarded to the examiner for consideration.

The examiner will no longer review appeal briefs for compliance with the applicable regulations, according to the USPTO.

The USPTO stated that it expects to achieve a reduction in ex parte reexamination proceeding appeal pendency as measured from the filing of a notice of appeal to docketing of the appeal by eliminating duplicate reviews by the examiner and the BPAI.

The USPTO added that it is expecting further reduction in pendency because the streamlined procedure will increase consistency in the determination, and thereby reduce the number of notices of noncompliant appeal brief and non-substantive returns from the BPAI that require appellants to file corrected appeal briefs in ex parte reexamination proceeding appeals.

The USPTO clarified that this new appeal brief review procedure is applicable to appeal briefs filed in ex parte reexamination proceedings on or after May 25, 2010.

Under the streamlined procedure for appeal brief review, upon the filing of an appeal brief in ex parte reexamination proceeding appeals, the Chief Judge will review the appeal brief to determine whether the appeal brief complies with 37 CFR 41.37 before it is forwarded to the Central Reexamination Unit or other Technology Center examiner for consideration.

The Chief Judge will endeavor to complete this determination within one month from the filing of the appeal brief, the USPTO said.

If the appeal brief is determined to be compliant with 37 CFR 41.37, the Chief Judge will accept the appeal brief and forward it to the examiner for consideration. If the Chief Judge determines that the appeal brief is not compliant with 37 CFR 41.37 and sends appellant a notice of noncompliant brief requiring a corrected brief, appellant will be required to file a corrected brief within the time period set forth in the notice to avoid the dismissal of the appeal.

The Chief Judge will also have the sole responsibility for determining whether corrected briefs comply with 37 CFR 41.37, and will address any inquiries and petitions regarding notices of noncompliant briefs. The Chief Judge’s responsibility for determining whether appeal briefs comply with 37 CFR 41.37 is not considered a transfer of jurisdiction when an appeal brief is filed, but rather is only a transfer of the specific responsibility of notifying appellant under 37 CFR 41.37(d) of the reasons for non-compliance. The Patent Examining Corps retains the jurisdiction over the ex parte reexamination proceeding to consider the appeal brief, conduct an appeal conference, draft an examiner’s answer, and decide the entry of amendments, evidence, and information disclosure statements filed after the final rejection or after the filing of a notice of appeal.

Furthermore, petitions concerning the refusal to enter amendments and/or evidence remain delegated to the Patent Examining Corps as provided in the Manual of Patent Examining Procedure (MPEP) 1002.02(b) and (c).

The USPTO also clarified that this new procedure does not apply to inter partes reexamination proceedings. The USPTO is considering a streamlined procedure for review of briefs filed in inter partes reexamination proceedings, in which the Chief Judge will also have the sole responsibility for determining whether briefs filed in inter partes reexamination proceedings comply with 37 CFR 41.37, 41.67, 41.68, and 41.71l.

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