Thursday, January 19, 2012

USPTO Patent Appeal Rules Effective on January 23, 2012

The PTO published the final rules of appeal practice before the Board of Patent Appeals and Interferences. They apply to all appeals in which the notice of appeal is filed on or after January 23, 2012. 

Although detailed (30 pages of fine print), the final rules simplify the current process and level the playing field in favor of appellants. More specifically, the current rules are amended to: 

  1. Remove certain requirements for the appeal brief; 
  2. Provide the Board take jurisdiction earlier in the process;
  3. No longer require the examiner acknowledge receipt of the reply brief; 
  4. Allow one to seek review of an undesignated new ground of rejection in the examiner's answer or the Board's decision;
  5. Presume an appeal is taken for all rejected claims; and 
  6. Clarify a rejection in examiner's answer that relies on evidence not presented in the last Office action is a new ground of rejection.
Fortunately, the PTO withdrew the appeal rules proposed in 2008. They were too technical and had little support from the patent community. However, I don't expect the final rules to do much to reduce the backlog of nearly 25,000 appeals displayed in Patently-O's BPAI Backlog: Only Growth in August 2011. This will require more Board members who are willing to write brief opinions.  

It's usually best to work with examiners, but if a case is ready for appeal, don't let the backlog cause you to "shrivel up"as the PTO may intercept and allow a case after review of the appeal brief without waiting for the Board to decide. See e.g., US Application No. 10/683,204 using PAIR.

Copyright © 2012 Robert Moll. All rights reserved.