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New Rules of Practice Before the BPAI

By just_n_examiner

Back in November, the Office published a final rule detailing changes in the rules of practice before the Board of Patent Appeals and Interferences. The changes apply to all ex parte appeals in which the notice of appeal was filed on or after 23 January 2012.

The changes seem to be a logical rolling back of some provisions of the rules which required appeal briefs and examiner's answers to include seemingly overly formalistic or redundant information. These include:

* Statement of status of claims
* Statement of status of amendments
* Statement of grounds of rejection to be reviewed on appeal
* Evidence appendix
* Related proceedings appendix.

These sections were never very useful. The requirement for inclusion of the two appendices, particularly considering that they overwhelmingly included the single word "None", made no sense, since their omission was the sole cause for a large proportion of notices of non-compliant appeal brief (in my experience, anyway).

Other provisions are designed to shorten the time to move appeals to the Board and reach final resolution, as well as to clarify and simplify petition practice on appeal, reduce confusion as to which claims are on appeal, and avoid unintentional cancellation of claims due to mistakes in the notice of appeal or appeal brief. These provisions include:

• Treating appeals as being taken from all non-canceled claims


• Transferring jurisdiction to the Board immediately upon the filing of a reply brief or the expiration of time to file a reply brief; examiners will no longer file a response to a reply brief


• Applying default assumptions upon the absence of statements of real party-in-interest [assums the inventors] or related cases [assumes none]


• Tolling the period for filing a reply brief upon the filing of a petition alleging a non-designated new ground of rejection in the examiner's answer

The rule changes also cut some slack to pro se appellants if they fail to adhere to the strict requirements of an appeal brief, such as neglecting to include a brief summary of the claimed subject matter.

Overall, these new rules constitute some common sense (and welcome) changes to simplify, shorten and improve the entire appeal process.

Full post as published by Just a Patent Examiner on February 27, 2012 (boomark / email).