USPTO seeks comment on proposed rules to streamline patent appeal procedures

On November 15, 2010, the USPTO published a proposed rule that is intended to clarify and simplify patent appeals practice.   Some of the most significant changes include proposals to:

  • Remove several requirements from the Appeal Brief:  The new rule would eliminate the current requirements that an Appeal Brief include a claims appendix, a description of the status of the claims, a description of amendments, and an identification of the claims to be reviewed upon appeal.  Since this information is already on the record, the USPTO seeks to eliminate the burden on applicants that is imposed by current requirements to include this information in the Appeal Brief.
  • Provide guidelines to help applicants streamline arguments:  The proposed rule contains specific guidance for applicants to follow when presenting arguments in an Appeal Brief.  It includes specific examples, and it encourages the use of headings to help the Board easily identify the arguments presented.
  • Establish procedures to address new rejections that the USPTO may raise during the appeal process:  In some cases, the Examiner may raise a new ground of rejection in his or her answer to the Appeal Brief.  In others, the Board may impose a new ground of rejection in its opinion.   In either case, the proposed rule will establish specific procedures that will allow applicants to petition the director in such a situation.
  • Limit authority of the Board to remand a case to the Examiner.  The Board is currently permitted to remand a case to the Examiner without affirmatively deciding to allow or reject claims.  This procedure can frustrate an applicant, who finds that the Board agrees with the Appellant’s position, only to have the case remanded to the Examiner who once again rejects the case.  The proposed rule limits remand authority and notes that the authority should be used sparingly.  To help ensure this, remand authority is limited to the Chief Administrative Patent Judge, and it should only be used in situations where errors in the appeal process prevent the Board from deciding the case. 

The proposed rule also publishes statistics about the existing Pre-appeal Brief Conference Program.  Under this Program, an appellant may request that a panel of three examiners review the case before it proceeds to appeal.  The published statistics indicate that in each of the past five years, between 56 and 59 percent of the cases proceeded to the Board for a formal appeal, while appellants succeeded in reopening prosecution or obtaining allowance in 39 to 43 percent of the cases in each year.

The new proposal rescinds a final rule regarding patent appeals that the USPTO published in June 2008.   The USPTO stayed the effectiveness of the final rule after it determined that additional information collection was required.  With this proposal, the USPTO’s stay of the 2008 rule will be permanent.

The USPTO will accept comments on the proposed rule through January 14, 2011.

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