Wednesday, July 13, 2005

USPTO ANNOUNCES A POTENTIAL THIRD WAY TO ADDRESS EXAMINER REJECTIONS: Under the current USPTO practice, every applicant whose claims have been twice rejected may (1) appeal the examiner's decision to the Board of Patent Appeals and Interferences, or (2) file an RCE and continue prosecution.

When pursing an appeal, the applicant first files a notice of appeal, accompanied by the appropriate fee. A new pilot program, announced yesterday offers applicants an opportunity to request a review of identified matters on appeal using an "appeal conference" prior to the filing of an appeal brief. The goals of the program are (1) to identify the presence or absence of clearly improper rejections based upon error(s) in facts, or (2) to identify the omission or presence of essential elements required to establish a prima facie rejection.

If the applicant feels the rejections of record are clearly not proper and are without basis, then filing this request may result in a panel decision that eliminates the need to file an appeal brief. This should be based upon a clear legal or factual deficiency in the rejections rather than an interpretation of the claims or prior art teachings. The latter is more appropriate for the traditional appeal process currently employed by applicants.

A panel of examiners (including the examiner of record) will considerthe merits of each ground of rejection for which appeal has been requestedand will issue a written decision as to the status of the application.

- Covered in Dennis Crouch's Patently-O blog, as well as I-P Updates.

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