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Jan 20107
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Proposed Modifications to BPAI Rules Regarding Ex Parte Appeals

The United State Patent & Trademark Office (USPTO) is considering modifications to rules governing practice before the Board of Patent Appeals and Interferences (BPAI) in ex parte appeals. Changes to the BPAI rules were first proposed in 2007 and finalized in June 2008 (“final rules”). However, those changes were withdrawn by the USPTO on the day before they were scheduled to become effective.

Based on the previously submitted comments and public concerns regarding the final rules, the USPTO has recently issued a Notice seeking public comment on possible revisions to the final rules. A roundtable discussion regarding the proposed revisions is set to be held January 20, 2010 and written comments are to be submitted by February 12, 2010.

More specifically, the changes the USPTO is considering are: (1) deleting portions of the final rules that require the filing of (a) a jurisdictional statement, table of contents, table of authorities, and statement of facts in appeal briefs, (b) a table of contents, table of authorities, and statement of additional facts in reply briefs, and (c) a table of contents and table of authorities in requests for rehearing filed in ex parte appeals; (2) deleting portions of the final rules that require the appellant to specifically identify which arguments were previously presented by the Examiner and which arguments are new; (3) deleting portions of the final rules that require specific formatting requirements and page limits for appeal briefs, reply briefs, and requests for rehearing; (4) deleting portions of the final rules that require appellants to provide a list of technical terms and other unusual words for an oral hearing; (5) allowing the Examiner to continue to enter a new ground of rejection in an examiner’s answer (as is allowed under the current rules); and (6) not allowing the Examiner to file a supplemental examiner’s answer in response to the appellant’s reply brief.

Generally, the proposed modifications will substantially align the final rules with the rules currently in effect. In practice, only minor changes to the appeal and reply brief would be necessary if the proposed modifications take effect. Fortunately, the USPTO has proposed that the most onerous provisions of the final rules be deleted.

For further details, the official USPTO Notice is available here. Please check back here in the future as we will provide further information once the proposed modifications are finalized or additional modifications are proposed.