BPAI Rules for Ex Parte Appeals: Request for Comment and Notice of Roundtable

The USPTO is still considering modifying its rules that govern appeals to the Board of Patent Appeals and Interferences (BPAI) in ex parte appeals.  Before moving forward , the office is “seeking further public comment on possible revisions to portions” of the final rules originally published in 2007. A roundtable will be held January 20, 2010 from 9:30 am – 12:30 pm at the USPTO.  Requests to participate must be submitted by January 8, 2010 to linda.horner@uspto. Written comments on potential revisions should be submitted by February 12, 2010 to BPAI.Rules@uspto.gov.

Background: The USPTO has seen an incredible influx of appeals. In FY 2007, the BPAI received fewer than five-thousand appeals. By FY 2009, that number had more than tripled — leaving a backlog of over thirteen thousand cases today.  This deluge of cases is the primary motivation behind the proposed rule changes.  The office is looking for ways to ensure that the BPAI can make better decisions in a more timely manner.  

The BPAI rule change has been something of a debacle — perhaps largely due to a backlash against the unrelated claim and continuation rule changes. The BPAI rules were proposed in 2007 and finalized in June 2008 with a December 10, 2008 effective date. However, on the day before its implementation, the USPTO withdrew the rules based on a failure to follow OMB information collection rules.

Specific “changes-to-the-changes” being considered:

  • (1) Deleting portions of the rule that require the filing of a petition to the Chief Administrative Patent Judge seeking extensions of time to file certain papers after an appeal brief is filed in an ex parte appeal or seeking to exceed a page limit;
  • (2) deleting portions of the rule that require the filing of a jurisdictional statement, table of contents, table of authorities, and statement of facts in appeal briefs, a table of contents, table of authorities, and statement of additional facts in reply briefs, and a table of contents and table of authorities in requests for rehearing filed in ex parte appeals;
  • (3) deleting portions of the rule that require an appellant to specifically identify which arguments were previously presented to the Examiner and which arguments are new;
  • (4) deleting portions of the rule that require specific formatting requirements and page limits for appeal briefs, reply briefs, and requests for rehearing; and
  • (5) deleting portions of the rule that require appellants to provide a list of technical terms and other unusual words for an oral hearing. The Office is also considering a revision to the final rule so that an examiner may continue to enter a new ground of rejection in an examiner’s answer (as is allowed under the current rules).
  • the Office is also considering not allowing an examiner to file a supplemental examiner’s answer in response to a reply brief.
  • the Office is also considering revising the final rule to make clear that the Chief Administrative Patent Judge, rather than the Board, may remand an application to the examiner.

Documents:

 

20 thoughts on “BPAI Rules for Ex Parte Appeals: Request for Comment and Notice of Roundtable

  1. 11

    I don’t have anything substantive to say about the “failing to provide the states with a Republican Form of Government.” I do however, recall that my bar exam prep course indicated that failing to provide a Republican Form of Government is always a wrong answer on the MBE.

  2. 10

    The PTO should go back to doing nothing but having those outreach meetings where they serve bad Costco food and bad coffee. In hindsight, those were the good old days, my friends.

  3. 9

    Toupin, the PTO G.C. appointed by Dudas, actually told the AIPLA PTO practitioner’s committee at the AIPLA meeting that practitioners should file appeals rather than continuations because they are faster. The reaction was, of course, how could he be so out of touch with the reality of the TOTAL time [and expense] for an appeal, including the time waiting for an examiners answer?
    But that is not the current Board backlog problem. It is the large increase in the rejection rate also caused by the former PTO management, compounded by the effect of the KSR decision and the examining confusion created by In re Bilski.

  4. 8

    DC,

    “I did not intend to say that the increased filing of appeals served as the backlash”

    Thanks. Actually, I don’t think you did say that.

  5. 7

    JV — I did not intend to say that the increased filing of appeals served as the backlash. Rather, it was the highly vocal (and court sanctioned) criticism against the claim & continuation rules that worked to derail the BPAI rule changes.

  6. 6

    DC says,

    “perhaps largely due to a backlash against the unrelated claim and continuation rule changes”

    I take issue with characterizing the “incredible influs” as a “backlash”. The implication that the increased filing of appeals was an antagonistic response rather than a reasoned one is off base IMO.

    The continuations/claims rules limited the filings of RCEs for *families* of applications, and applications might rationably decide to file more appeals. In fact PTO commentary in the continuation/claims rules suggested that appealing rather than filing an RCE would often be the better course.

    KB says,

    “failing to provide the states with a Republican Form of Government.”

    Uh …

  7. 5

    Classic, but foreseeable, unintended consequences of illegal power grabs.

    – fixed your sentence for you.

  8. 4

    I knew Kappos would not enact any of the asinine Dudas rules that exalt form over substance and are really designed to make appealing as undesirable as possible. Thank god.

  9. 3

    There comes a time when a governmental body, through regulation or other means, causes such delay in adjudicating the rights of its citizens as to violate the Due Process Clause of the Fifth Amendment and/or Fourteenth Amendment. This is the problem with the current economic issues of the United States. My citizens in California are beign subjected to force closure of courts four times a month, because of the current monetary system that is adopted by the Federal Government. It is my opinion that when a monetary system, or any other policy for that matter, adopted by the Federal Government causes undue delay in government functions at either the state or Federal level it becomes prima facie unconstitutional. In fact, it could be said that the effects of the current monetary system adopted by the United States violates Article I, section IV of the United States Constitution, because with courts being precluded from function the United States Government is failing to provide the states with a Republican Form of Government. See Hamdi v. Rumsfeld, 542 U.S. 507 (2004); See Ex Parte Merryman, 17 F. Cas. 144 (1861). Isn’t failing to provide resources to mainatin the operation of the courts tantamount to suspending the Write of Habeus Corpus? But I digress.

  10. 2

    It is a result of SPEs being cowards, that is, not standing up for and backing up their examiners. Blindly following orders is not acceptable and will result in these types of insane measures.

Comments are closed.