USPTO News: Patent Office to Publish New Appeals Rules on Tuesday

    By Donald Zuhn --

The U.S. Patent and Trademark Office announced today that new rules regarding ex parte appeals before the Board of Patent Appeals and Interferences will be published in the Federal Register on Tuesday, June 10, 2008.  According to the Office's press release, the new appeals rules "will add clarity and efficiency to the appeal process."  Commenting on the new rules, USPTO Director Jon Dudas said that the "[b]y exchanging information and crystallizing the issues of the dispute earlier in the process," the new appeals rules will result in a "more streamlined appeal process and more efficient decision-making."  In addition, the Office expects that the new appeals rules "will result in some appeals being resolved before they reach the Board."

Under the new appeals rules, examiners will no longer provide a response to the reply brief, new grounds of rejection will no longer be permitted in an examiner's answer, and a supplemental examiner's answer will no longer be permitted in response to a reply brief.  In addition, the new appeals rules will clearly set forth the requirements for briefs, with some requirements being eliminated (e.g., the "summary of the claimed subject matter").  According to the Patent Office, the page limitations that will be imposed under the new appeals rules will "ensure concise and clear arguments."

The Office noted that the new appeals rules reflect changes made to the notice of proposed rulemaking that was published in the Federal Register on July 30, 2007.  For example, the initial page limits set for the appeal brief and reply brief were increased by five pages to 30 and 20 pages, respectively.

The new appeals rules will go into effect on December 10, 2008, six months from the date the new rules are published in the Federal Register, and the new appeals rules will apply to all appeals in which an appeal brief is filed on or after that date.

Patent Docs will present a more comprehensive report on the new appeals rules following their publication on Tuesday.

Comments

[Elizabeth Barnhard]

The final rules, not yet available on the USPTO website, have been published in 73 Fed. Reg. 32397 and a pdf of the final rules can be obtained at http://frwebgate2.access.gpo.gov/cgi-bin/PDFgate.cgi?WAISdocID=104339112746+1+1+0&WAISaction=retrieve.

[Elizabeth Barnhard]

The link within my previous post does not work, but if you click on my name in the previous post, you will get the pdf version of the new appeals rules.