Several weeks ago, the PTO published a notice in the Federal Register regarding the previously delayed final rules regarding procedures at the Board of Patent Appeals and Interferences (BPAI).
Many of the most controversial provisions of the previously proposed rules have been changed or deleted. Specifically, the Notice refers to deleting many of the highly technical requirements that would have added significantly to the cost of filing an appeal brief. The portions of the rule that would have required that briefs and other papers contain specific headings, that they be filed in specific fonts, that they not exceed a certain page limit, and that they include a glossary of terms for the Board have been deleted. The requirement that the appellant identify which arguments were presented to the examiner and which are new arguments has also been deleted.
The rules as now proposed would also affect an examiner’s conduct. The rules would continue to permit new grounds of rejection to be raised in examiner’s answers and also would no longer permit a supplemental examiner’s answer to a reply brief by the appellant.
The Notice cites as the purpose of the rules to “efficiently frame any dispute” between the appellant and the examiner and “to provide the best opportunity for resolution of the dispute without the necessity of proceeding with the appeal.” Hopefully this means that fewer cases will get to the Board because more of them will be remanded to the examiner to correct poor rejections or issue allowances.
There are still a number of technical requirements being added to appeal brief requirements, including those relating to providing specific specification and drawing support for each claim on appeal. In general, the worst requirements will be deleted.
The BPAI does need to take steps to reduce the crazy situation involving an appeal docket that is growing at an exponential pace. It is difficult to tell how much effect these rules would have on that situation.
The Notice refers to a roundtable discussion concerning the rules that the PTO will conduct on January 20. The PTO solicits public comments on the new rules until February 12 and hopes that the timing of the Roundtable will permit comments before and after that event. This should permit a more complete public participation than prior PTO procedures have.
It is quite refreshing that the new administration is seeking to work with the patent community in crafting new rules and solutions to its problems, rather than working against them.