Anticipate This!™ | Patent and Trademark Law Blog

New Rules Regarding Ex Parte Appeals Before the BPAI.

Posted in General Commentary by Jake Ward on June 12, 2008

Per a USPTO press release earlier this week:

The Department of Commerce’s United States Patent and Trademark Office (USPTO) will publish tomorrow in the Federal Register new rules that will improve the process of ex parte appeals before the USPTO’s Board of Patent Appeals and Interferences (BPAI). The final rule provides new requirements and clarifications that will help to streamline the appeal process and lead to more timely Board 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 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 Board 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.

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.

The full text of the new rules will be available beginning tomorrow, June 10, via the USPTO Web site

The new rules have now been published and may be viewed at the USPTO website here.

Professor Crouch has nicely summarized the rules changes, as follows:

– The most substantive change may be the requirement that non-appealable errors must be resolved by petition prior to filing an appeal to the BPAI. “Failure to timely file a petition seeking review of a decision of the examiner related to a non-appealable issue would generally constitute a waiver to have those issues considered.”

– Instead of filing a summary of the invention, the applicant must file “a claims analysis.” This analysis is essentially a claim chart indicating “the page and line or paragraph after each limitation where the limitation is described in the specification as filed.”

– 30 page limit for the Grounds of Rejection, Statement of Facts, and Arguments. (14 point font).

– A complete appeal brief will include each of the following (in the correct order):
1) Statement of the real party in interest,
2) statement of related cases,
3) jurisdictional statement,
4) table of contents,
5) table of authorities,
6) [reserved],
7) status of amendments,
8) grounds of rejection to be reviewed,
9) statement of facts,
10) argument, and
11) an appendix containing (a) claims section, (b) claim support and drawing analysis section, (c) means or step plus function analysis section, (d) evidence section, and (e) related cases section.

– new grounds of rejection are no longer permitted in an examiner’s answer,
the examiner’s response to a reply brief is eliminated,

– petitions to exceed the page limit for an appeal brief, reply brief or request for rehearing are made under Rule 41.3 which requires a $400 fee,

– petitions for an extension of time to file a reply brief, request for oral hearing, or request for rehearing are made under Rule 41.3 which requires a $400 fee, and

– a list of technical terms or unusual words to be provided to the transcriber at the oral hearing.

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