New BPAI Rules Released For Ex Parte Appeals

The PTO published in today's Federal Register new rules that tighten the appeals process before the BPAI. The proposed rules apply only to ex parte appeals. Included in the appeals rules are

(1) Page limits;

(2) New format for appeal briefs, with new headings, including "table of authorities",

(3) Restrictions on "new" arguments made in the appeal - "each rejection for which review is sought shall be separately argued under a separate heading,"

(4) "Any finding made or conclusion reached by the examiner that is not challenged would be presumed to be correct";

(5) Sanctions - a sanction may be imposed against an appellant for misconduct, including: failure to comply with an order entered in the appeal or an applicable rule, advancing or maintaining a "misleading or frivolous request for relief or argument and engaging in dilatory tactics."

The PTO has released these rules in full anticipation of a surge in appeals:

The Board is currently experiencing a large increase in the number of ex parte appeals. In FY 2006, the Board received 3,349 ex parte appeals. In FY 2007, the Board expects to receive more than 4,000 ex parte appeals. In FY 2008, the Board expects to receive over 5,000 ex parte appeals. These rules are proposed to change procedures in such a way as to allow the Board to continue to resolve ex parte appeals in a timely manner.

The schedule for commenting has been set until September 28, 2007. No public hearings will be held. Comments may submitted by letter, fax or e-mailed at BPAI.Rules@uspto.gov.

View proposed rules here (link)