Patent Law

USPTO Proposes New Rules Intended to Streamline Appeals to the BPAI

By Dennis Crouch

In recent years, the Board of Patent Appeals and Interferences (BPAI or Board) has seen a tremendous influx in the number of appeals being filed and a growing backlog of cases to be decided.  In response, the Office is struggling for ways to streamline the appeal process without sacrificing decision quality.

The USPTO has now issued a new set of proposed rules for proceedings in Ex Parte Appeals before the Board.  This new set of rules is a major complete revision of the BPAI rules that had been proposed in 2008 and should be seen as operating in parallel to ongoing changes-in-practice at the BPAI announced earlier in 2010.

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

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Particular proposed rule changes include:

• The Board will take jurisdiction over appeals as soon as the reply brief is filed, and examiners would no longer have an opportunity to respond to a reply brief.
• Once it takes jurisdiction, a procedural remand of the case would require Director's approval.
• The Board will presume that all pending claims under rejection are being appealed.
• The Rules will no longer require certain statements that simply reiterate information already of record. (e.g., claims appendix and statement on the grounds for rejection).
• An examiner's answer that includes a rejection based on new evidence will be designated as a new ground of rejection, and applicants will be allowed to delay the appeal in order to 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.

File Attachment: 2010.Appeal.Rules.Proposed.pdf (176 KB).

Full post as published by Patently Obvious on November 15, 2010 (boomark / email).