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Monday Nov 15, 2010

Proposed Rulemaking to Simplify and Streamline Ex Parte Appeals

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

You may recall our recent efforts to streamline the appeals process by vesting the Board with the sole authority to hold an appeal brief noncompliant.  This has led to a dramatic reduction in the percent of briefs that are “bounced” due to minor technical flaws.  But that was only the beginning. 

To further simplify and streamline the appeals process, the USPTO has now published a notice of proposed rulemaking that proposes to rescind the stayed 2008 Final Rule and asks for your comments on a number of proposed changes to the rules currently governing ex parte appeals.  These changes are being proposed after carefully considering the comments that we received both at the public roundtable of January 2010 and in response to the advance notice of December 2009.

In short, the notice of proposed rulemaking proposes to:

  • Rescind the stayed 2008 Final Rule.
  • Eliminate a number of briefing requirements that ask for information that is readily available in the file history (e.g., statements of the status of claims, status of amendments, grounds of rejection to be reviewed on appeal, the claims appendix, evidence appendix, and related proceedings appendix).
  • Provide that only those claim limitations in dispute will need to be identified in the statement of the summary of the claimed subject matter.
  • Provide that any dependent claims that are separately argued will need to be called out in a subheading (a best practice of many applicants, and one that ensures that separate arguments are not overlooked).
  • Provide for a simplified examiner’s answer that focuses on addressing the applicant’s arguments rather than repeating the final rejection.
  • Provide that the Board will presume that all claims under rejection are on appeal unless the applicant cancels the claims, thereby eliminating the unintended cancellation of claims by the examiner.
  • Provide that any new evidence relied upon in a rejection set forth in an examiner’s answer shall be designated as a new ground of rejection (the notice also includes a good survey of case law to help determine what constitutes a new ground of rejection).
  • Create a specified procedure for petitioning an undesignated new ground of rejection in an examiner’s answer, which will toll the time for filing a reply brief and thereby eliminate the need to seek an extension for the reply brief.
  • No longer require examiners to “acknowledge” receipt of reply briefs before jurisdiction passes to the Board, thus giving the Board jurisdiction immediately upon filing of the reply brief.
  • Require the Board panel to affirm or reverse the rejections on the merits (any remand that does not decide the appeal on the merits will require the Director’s approval).


These are just some of the changes in the notice which we think will improve appellate practice.  We invite you to read the full notice and submit your comments to

Thanks, as always, for your feedback.


Director Kappos: Thanks. This is a HUGE improvement. Most importantly, it reflects a complete shift in attitude - instead of viewing applicants/appellants as the enemy, to be hobbled under ever limit the PTO can devise, this is designed to get to the right answer as quickly as we all can. There are more than a few problems, some of them quite major, of non-compliance with administrative rule making law, but that's teachable once the PTO demonstrates that it wants to learn and comply, and I think this makes that demonstration. There are also some ripple effects that flow back to §§ 131/132 prosecution that need to be ironed out, but that's also well within the range of fixable. We're all looking forward to working together. Thanks.

Posted by David Boundy on November 15, 2010 at 07:39 PM EST #

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