Tuesday, November 16, 2010

USPTO Looks to Streamline Appeals by Amending BPAI Rules

Yesterday, the USPTO announced proposed changes to the rules governing ex parte patent appeals before the Board of Patent Appeals and Interferences. (BPAI).  According to Director Kappos, “we hear often from stakeholders that the patent appellate process is too complicated and burdensome . . . the goal of this proposed rulemaking is to simplify the appellate process in a way that reduces the burden on appellants and examiners to present an appeal to the Board.”

The notable changes in the proposed rule, as compared to the current Board rule, are:

(1) The Board would presume that an appeal is taken from the rejection of all claims under rejection
unless cancelled by an amendment filed by appellant;

(2) the Board would take jurisdiction upon the filing of a reply brief or the expiration of time in which to file such a reply brief, whichever is earlier;

(3) the requirements to include statements of the status of claims and grounds of rejection to be reviewed on appeal and the requirements to include a claims appendix, an evidence appendix and a related proceedings appendix would be eliminated from the appeal brief;

(4) the Board may apply default assumptions if a brief omits a statement of the real party-in-interest or a statement of related cases;

(5) for purposes of the examiner’s answer, any rejection that relies upon new evidence shall be designated as a new ground of rejection;

(6) the appellant can await a decision on a petition seeking review of an examiner’s failure to designate a
rejection in the answer as a new ground of rejection prior to filing a reply brief and thereby avoid having to file a request for extension of time in which to file the reply brief; and

(7) the examiner’s response to a reply brief would be eliminated.

Last, but not least, the proposed 2008 Final Rule on Appeals would be rescinded.

Comments on the proposed rules should be submitted to BPAI.Rules@uspto.gov by January 14, 2011.

Read/download the Fed. Reg. Notice here (link)

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