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Streamlined Patent Appeals

Posted Wednesday, December 7, 2011 by Mike Gibbons

If an application for a patent is twice rejected by a patent examiner, an option open to a patent attorney is an appeal. The Patent and Trademark Office houses a Board of Patent Appeals and Interferences (BPAI), which hears arguments in cases where a patent application has been rejected, or where two parties claim the same invention.

The PTO has just announced a new set of rules for patent appeals which promise to streamline the appeal process. During an appeal, the patent attorney for the applicant must submit an appeal brief, which is essentially a document that outlines the argument for the patent to the judges of the BPAI. Appeal briefs have previously had strict and detailed formal requirements, but the PTO as part of the new rules has eliminated some of those requirements. One result should be less time required to prepare appeal briefs.

The Chief Judge of the BPAI, Donald Smith, recently wrote to the PTO’s stakeholders, including patent attorneys and agents, to describe the other benefits of the new rules related to patent appeals. Among the other changes Judge Smith cited are:

•Eliminates a number of briefing requirements that ask for information that is readily available in the file history (e.g., statements of the status of claims, status of amendments, and the grounds of rejection to be reviewed on appeal; the evidence appendix; and the related proceedings appendix).

•No longer requires examiners to “acknowledge” receipt of reply briefs before jurisdiction passes to the Board, thus giving the Board jurisdiction immediately upon filing of the reply brief or upon the expiration of the time to do so.

•Provides that the Board will presume that all claims under rejection are on appeal unless the applicant cancels the claims by amendment, thereby eliminating the unintended cancellation of claims by the examiner.

•Creates a specified procedure for seeking review of an undesignated new ground of rejection in an examiner’s answer, which will toll the time for filing a reply brief and thereby eliminate the need to seek an extension for the reply brief.

•Clarifies that, for purposes of the examiner’s answer, any rejection that relies upon evidence not relied upon in the Office action from which the appeal is taken shall be designated as a new ground of rejection (the notice also includes a useful survey of case law to help in the determination as to what constitutes a new ground of rejection).

The new rules are planned to go into effect January 21, 2012.

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