IP Alerts

IP Alert
IP Alert: New Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals

December 5, 2011

The U.S. Patent and Trademark Office (USPTO) announced new rules that apply to all appeals in which a notice of appeal is filed on or after January 23, 2012. These rules are of significance to Fitch Even clients who prosecute patent applications before the USPTO. 

The new rules represent a significant departure from earlier appeal rules proposed by the USPTO. In its earlier rules proposal, the USPTO proposed rules that would dramatically increase the paperwork requirements for prosecuting an appeal, and that would have led to a substantial increase in the cost of filing an appeal. Many parties opposed the rules on Paperwork Reduction Act grounds, and the old rules failed to pass. The current new rules proposal has done away with the increased paperwork requirements and is not expected to lead to significant cost changes.

Highlights of the new rules include the following: 

  • Increased attention is given to new grounds of rejection, including a new rule that tolls the time period to file a reply brief when the appellant also seeks review (via a petition) of the primary examiner’s failure to designate a rejection as a new ground of rejection in an examiner’s answer.
  • The rule addressing Citation of Authority has been amended to provide for “preferred” citations as opposed to mandatory citations and to delete the requirement for parallel citations to several reporter systems. This rule retains the requirement for “pinpoint citations whenever a specific holding or portion of an authority is invoked.
  • Both the appellant and the examiner may now freely refer to dictionaries at any time without violating other rules.
  • An appeal is now presumed to be taken from the rejection of all claims under rejection unless canceled by an amendment filed by the applicant and entered by the USPTO; the appellant no longer needs to affirmatively make such a statement in the notice of appeal and/or in the status of claims section of the brief.
  • Jurisdiction over appeals now passes to the Board of Patent Appeals and Interferences (“the Board”) upon the filing of a reply brief or upon the expiration of the time in which to file such a reply brief, whichever is earlier.
  • When a brief fails to identify a real party in interest, the Board may now assume that the named inventors are the real party in interest.
  • The statement of related cases may be omitted when there are no such related cases.
  • The brief need no longer contain a statement regarding the status of the claims.
  • Various clarifications were made regarding the Summary section and the parsing of separate arguments.
  • The requirements of the Examiner’s Answer have been somewhat simplified, and the examiner no longer must determine whether the brief meets regulatory requirements of form.
  • The appellant may submit no more than a single reply brief. The new rules also make clear that any argument raised in the reply brief that was not raised in the brief, or is not responsive to an argument raised in the examiner’s answer, will not be considered by the Board unless good cause is shown.
  • An oral hearing must be requested within two months from the date of the examiner’s answer or the filing of a reply brief, whichever is earlier.
  • “Supplemental examiner’s answer” has been changed to “substitute examiner’s answer.”
  • The Board has lost the power to suggest in their decisions how a claim could be amended to overcome a rejection.
  • New arguments are permitted in a request for rehearing when responding to a new ground of rejection.

In addition to the above, there are numerous other changes to the appellate process, some affected by inclusion of new statements and others by deletion of previous expressions. Fitch Even will be offering a free CLE webinar in the near future to address these new rules in considerably greater detail and to offer some corresponding practice tips.

If you have any question regarding these new rules, please contact Fitch Even counsel Kenneth W. Hairston, the author of this alert. 

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