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Monday Dec 05, 2011

Simplifying the Ex Parte Appeals Process and Reducing the Burden on Appellants and Examiners

Guest blog by Chief Administrative Patent Judge James Donald Smith

As the Chief Judge of the Board of Patent Appeals and Interferences, I am excited to be working with Director Kappos and Deputy Director Rea to advance their goals of being more responsive to the Office’s stakeholders and to improve the appeals process. In the few months that I have been at the Board, I have gained much more insight on the challenges that face the Board. I look forward to working with our stakeholders and the dedicated, hard-working professionals at the Board in addressing these challenges.

I am pleased to announce that, in an effort to further simplify and streamline the appeals process, the USPTO has published a notice of final rulemaking that makes changes to the rules currently governing ex parte appeals. These changes were prompted by comments that we received at the public roundtable of January 2010 and in response to the advance notice of December 2009 and the notice of proposed rulemaking of November 2010.

In short, the notice of final rulemaking:

  • Withdraws the indefinitely-delayed 2008 Final Rule. The current rulemaking effort takes into consideration the public’s comments and concerns regarding the 2008 Final Rule.
  • Eliminates 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, and the grounds of rejection to be reviewed on appeal; the evidence appendix; and the related proceedings appendix).
  • No longer requires 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 or upon the expiration of the time to do so.
  • Provides that the Board will presume that all claims under rejection are on appeal unless the applicant cancels the claims by amendment, thereby eliminating the unintended cancellation of claims by the examiner.
  • Creates a specified procedure for seeking review of 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.
  • Clarifies that, for purposes of the examiner’s answer, any rejection that relies upon evidence not relied upon in the Office action from which the appeal is taken shall be designated as a new ground of rejection (the notice also includes a useful survey of case law to help in the determination as to what constitutes a new ground of rejection).

These are just some of the changes in the notice which we think will improve appellate practice. Thank you for the constructive comments and for your continuing desire to improve the Board’s processes.


Chief Judge Smith. Thank you for this post and for working so hard to improve the efficacy of the appeal process. These rules are fine as far as they go and will hopefully be somewhat helpful. However, there is a big 25,000 pound elephant in the room. The Board has a growing 25,000+ backlog of cases pending appeals. What specifically is being done to address the enormous backlog? Thanks! Dennis Crouch

Posted by Dennis Crouch on December 05, 2011 at 11:41 AM EST #

Professor Crouch, Thank you for participating in what we want to be an open dialog between the Board and its stakeholders regarding the backlog issue. The Board is currently in the process of hiring more Administrative Patent Judges to work on reducing the backlog. Also, we also are focusing efforts on drafting decisions that are more concise and efficient, while striving to maintain the high level of quality appropriately expected from the Board. We are exploring other ways of addressing the backlog. To that end, we have established an email address to which our stakeholders may submit suggestions for our consideration: Lastly, let me assure you that, with the provision of sufficient resources, the Board can and will handle the new processes coming to us due to the passage of the America Invents Act, while concurrently devoting time and talent to the task of addressing the backlog of ex parte appeals cases. James Donald Smith Chief Administrative Patent Judge

Posted by James Donald Smith on January 09, 2012 at 10:10 AM EST #

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