Patent Law

The USPTO is still considering modifying its rules that govern appeals to the Board of Patent Appeals and Interferences (BPAI) in ex parte appeals.  Before moving forward , the office is 'seeking further public comment on possible revisions to portions' of the final rules originally published in 2007. A roundtable will be held January 20, 2010 from 9:30 am – 12:30 pm at the USPTO.  Requests to participate must be submitted by January 8, 2010 to linda.horner@uspto. Written comments on potential revisions should be submitted by February 12, 2010 to BPAI.Rules@uspto.gov.

Background: The USPTO has seen an incredible influx of appeals. In FY 2007, the BPAI received fewer than five-thousand appeals. By FY 2009, that number had more than tripled — leaving a backlog of over thirteen thousand cases today.  This deluge of cases is the primary motivation behind the proposed rule changes.  The office is looking for ways to ensure that the BPAI can make better decisions in a more timely manner.  

The BPAI rule change has been something of a debacle — perhaps largely due to a backlash against the unrelated claim and continuation rule changes. The BPAI rules were proposed in 2007 and finalized in June 2008 with a December 10, 2008 effective date. However, on the day before its implementation, the USPTO withdrew the rules based on a failure to follow OMB information collection rules.

Specific 'changes-to-the-changes' being considered:

• (1) Deleting portions of the rule that require the filing of a petition to the Chief Administrative Patent Judge seeking extensions of time to file certain papers after an appeal brief is filed in an ex parte appeal or seeking to exceed a page limit;
• (2) deleting portions of the rule that require the filing of a jurisdictional statement, table of contents, table of authorities, and statement of facts in appeal briefs, a table of contents, table of authorities, and statement of additional facts in reply briefs, and a table of contents and table of authorities in requests for rehearing filed in ex parte appeals;
• (3) deleting portions of the rule that require an appellant to specifically identify which arguments were previously presented to the Examiner and which arguments are new;
• (4) deleting portions of the rule that require specific formatting requirements and page limits for appeal briefs, reply briefs, and requests for rehearing; and
• (5) deleting portions of the rule that require appellants to provide a list of technical terms and other unusual words for an oral hearing. The Office is also considering a revision to the final rule so that an examiner may continue to enter a new ground of rejection in an examiner's answer (as is allowed under the current rules).
• the Office is also considering not allowing an examiner to file a supplemental examiner's answer in response to a reply brief.
• the Office is also considering revising the final rule to make clear that the Chief Administrative Patent Judge, rather than the Board, may remand an application to the examiner.

Documents:

• December 2009 BPAI Rule Modification Proposals (Note, the newest proposals are written in an odd way because they are modifications of the previously finalized rules).
• June 2008 Final Rules [Discussion on Patently-O]
• August 2004 Rules (Present Rules in Practice found at 37 CFR 41.30 – 41.54)