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Tuesday Mar 30, 2010

Streamlining the Appeals Process and Reducing Appeal Pendency

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


I thought I would let you know about a new streamlined procedure we have instituted for review of briefs filed in ex parte appeals in patent applications.  Under the new procedure, the Chief Judge of the Board of Patent Appeals and Interferences (BPAI) will have the sole responsibility for determining whether appeal briefs comply with the formality requirements governing the content of  these briefs.  This new procedure eliminates two layers of  review; previously the Patent Appeal Center and the examiner were required to review patent appeal briefs and evaluate their compliance with the formality requirements. 


The new streamlined process was instituted in response to suggestions made during the January 20, 2010 BPAI Roundtable  at which stakeholders suggested that we simplify the procedure for determining whether briefs comply with the rules.  We listened, and  have now instituted the new streamlined procedure that is also likely to reduce appeal pendency.  


Under the streamlined procedure, only the Chief Judge and his staff will conduct a compliance review of appeal briefs, and will do so at the time the appeal brief is filed.  If a brief is determined not to comply with the applicable regulations, the Chief Judge will promptly send the appellant a notice and provide a time period within which an appellant can file a corrected brief.  The Chief Judge will also have the sole responsibility for determining whether corrected briefs comply with the applicable regulations and addressing any inquiries and petitions regarding notices of noncompliant briefs.  Because this change affects only the internal process within the USPTO, applicants should continue to follow all procedures set forth in the regulations.


We expect this new procedure to reduce appeal pendency from the filing of a notice of appeal to the docketing of the appeal.  We expect a further reduction in pendency because the streamlined procedure will increase the consistency of the review, and thereby reduce the number of notices of noncompliant appeal brief and non-substantive returns from the BPAI that require appellants to file corrected appeal briefs. 


To further reduce the number of noncompliant appeal briefs, the Chief Judge has posted on the USPTO website the “Top Eight Reasons Appeal Briefs are Non-Compliant”—which applicants should read closely to avoid the common mistakes that result in defective briefs and delays.


Additional details about this new procedure are outlined in a Federal Register notice publishing presently.  As always, comments are welcome.  In fact, this entire change is the product of IP community comments.  Thanks for keeping them coming!


One change I'd like to see in the "Summary of Claimed Subject Matter" is to define the reference to the specification by paragraph number instead of 'page and line number'. I haven't included "line numbers" on my specifications in years, but when filing an Appeal Brief, I need to go back and count the line numbers to fulfill this requirement. Would an Appeal Brief be bounced as non-compliant if it referred to the specification by paragraph number, and not "page and line number"?

Posted by Wendy Koba on April 01, 2010 at 06:49 AM EDT #

While not directly related to appeal pendency, but results in delay of appeal is the repeated practice by an Examiner of responding to the submission of an Appeal Brief with a non-final office action in a single application. Can there be a mechanism or a rule put in place to limit an Examiner's ability to essentially short-circuit the appeal by issuing a non-final office action? Some ideas: 1. No count given for a non-final office action issued after an Appeal Brief is filed. 2. Allow for a conference similar to the Pre-Appeal Brief Conference prior to an Examiner responding to an Appeal Brief with a non-final Office action. 3. Make a rule to allow the practice of issuing a non-final Office Action after the Appeal Brief to be limited to once per single application.

Posted by Scott Servilla on April 08, 2010 at 11:30 AM EDT #

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