Dec 20106

Patent Office Publishes Proposed Revisions to Ex Parte Appeals Rules

The United States Patent and Trademark Office (USPTO) has published a notice containing proposed revisions to the rules governing ex parte appeals before the Board of Patent Appeals and Interferences.  The proposed rulemaking first rescinds the 2008 Final Rules, which had been stayed after concerns were raised with respect to compliance with the Paperwork Reduction Act.  In addition, there are a number of revisions to the current rules in response to recent public comments.  Some of the more notable proposed changes are listed below:

-Applicants will no longer be required to include certain information in their briefs which is already available in the application file history, such as status of claims, status of amendments, grounds of rejection to be reviewed on appeal, claims appendix, evidence appendix, and related proceedings appendix.

-The content of the Examiner’s Answer has also been simplified and will no longer require an explanation of the invention claimed or the grounds of rejection.  This will presumably encourage Examiners to focus on responding to the Applicant’s arguments instead of reiterating the rejections stated in the Office Action.

-Any evidence relied upon in the Examiner’s Answer which was not relied upon in the Office Action being appealed will be considered to be a new ground of rejection, and any answer which contains a new ground of rejection must be approved by the director.  Specific examples are given as to what constitutes a new ground of rejection, including changing a rejection from a § 102 basis to a § 103 basis and vice versa.

-The Board will be required to decide each case on the merits and will not be allowed to remand a case to the Examiner unless approved by the Director.

-Examiners will no longer be required to “acknowledge” the filing of a reply brief, allowing jurisdiction to pass to the Board once the reply brief is filed.

A copy of the notice containing the proposed revisions can be found here.