PTO Proposes New Appeal Rules

The PTO is again seeking to change the rules for patent appeals at the Board of Patent Appeals and Interferences.  The good news is that the new Federal Register notice indicates that the previous controversial and highly technical rules proposed by the last administration at the PTO have officially been rescinded.  Instead, the PTO is seeking to implement rules that should significantly simplify appeal proceedings.

Several of the notable changes include the following:

  1. The Board will presume that an appeal is taken from all the claims under rejection that are not cancelled by an amendment.  The appellant will no longer be required to specifically designate the claims that are under appeal.
  2. The Board will take jurisdiction once a reply brief is filed.  The examiner will no longer be required to acknowledge or respond to the reply brief.  This should speed up the appellate process by eliminating an unnecessary step.
  3. If the examiner’s answer relies on new evidence, it will be deemed a new ground of rejection.
  4. Appellants can await petition decisions on new grounds for rejection before filing a reply brief.
  5. Many of the technical requirements for information already in the record will be eliminated.  For example, appendices that include a listing of the claims, a listing or evidence, and a listing or related proceedings would no longer be required.  It will also no longer be necessary for the appellant to indicate the status of whether the last amendment was entered or not as this should be clear from the record.
  6. The requirement that the appellant make reference to the specification and drawings with respect to each independent claim is being clarified.  This requirement is only necessary to aid the Board in understanding the claims, and this only for claim limitations in dispute.  It is not necessary to cite each instance of support for each claim throughout the entire specification.
  7. The previously proposed rule suggested that appellants had the burden to point out how the examiner’s rejections were in error.  The examiner’s rejections were presumed to be correct if not specifically challenged by the appellant.  This presumption is removed from the newly proposed rules.
  8. The Board has remanded a large number of appeals back to the examiner in recent years.  This can cause significant delay in the process.  The newly proposed rule indicates that only the Director should have the authority to remand appeals and this should be done rarely, only in cases where the Board cannot decide the issues before it.

The PTO believes that these proposed changes will reduce the time required for an attorney to prepare and file an appeal brief from 34 hours to 31 hours or save nearly $1,000.  The PTO is seeking comments on these proposed changes by January 14, 2011.

Another step in the right direction for the Kappos Administration.  They appear to have taken comments on the previously proposed rules seriously and eliminated many of the controversial ones that would have simply added to the cost of an appeal without adding to its efficiency.

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One Response to “PTO Proposes New Appeal Rules”

  1. General Global Week in Review 22 November 2010 from IP Think Tank Says:

    [...] streamline appeals by amending BPAI Rules (271 Patent Blog) (Patents Post Grant Blog) (Patently-O) (Inventive Step) (Director’s Forum) (IP [...]

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