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).
Thanks, as always, for your feedback.