USPTO Proposes New Rules Intended to Streamline Appeals to the BPAI

In recent years, the Board of Patent Appeals and Interferences (BPAI or Board) has seen a tremendous influx in the number of appeals being filed and a growing backlog of cases to be decided.  In response, the Office is struggling for ways to streamline the appeal process without sacrificing decision quality.

The USPTO has now issued a new set of proposed rules for proceedings in Ex Parte Appeals before the Board.  This new set of rules is a major complete revision of the BPAI rules that had been proposed in 2008 and should be seen as operating in parallel to ongoing changes-in-practice at the BPAI announced earlier in 2010.

Comments on the proposed rules should be submitted to BPAI.Rules@uspto.gov by January 14, 2011.

* * * * *

Particular proposed rule changes include:

  • The Board will take jurisdiction over appeals as soon as the reply brief is filed, and examiners would no longer have an opportunity to respond to a reply brief.
  • Once it takes jurisdiction, a procedural remand of the case would require Director's approval.
  • The Board will presume that all pending claims under rejection are being appealed.
  • The Rules will no longer require certain statements that simply reiterate information already of record. (e.g., claims appendix and statement on the grounds for rejection).
  • An examiner's answer that includes a rejection based on new evidence will be designated as a new ground of rejection, and applicants will be allowed to delay the appeal in order to await a decision on a petition seeking review of an examiner's failure to designate a rejection in the answer as a new ground of rejection prior to filing a reply brief.

File Attachment: 2010.Appeal.Rules.Proposed.pdf (176 KB).

22 thoughts on “USPTO Proposes New Rules Intended to Streamline Appeals to the BPAI

  1. In order to have a workable system. NO Solicitor, Commissioner, OED or Commissioner Official can join POPA. That should just about do it. SO JUST DO IT!
    /
    /
    v

    And stop trying to cram these a@@inine acts down my throat. That last one was hillarius.

    Reply
  2. I didn’t realize that becoming a WQAS was even possibly considered as a career goal.

    Reply
  3. “Remind me again why you’re still there…”

    Isn’t every one of his posts a reminder?

    6 has been in a particularly bad mood lately. I guess that big job at his uncle’s cousin’s start up fell through. The crushing realization that his highest career goal is now to become a WQAS has started to sink in.

    Reply
  4. “An examiner’s answer that includes a rejection based on new evidence will be designated as a new ground of rejection…”

    Hope they clarify what is considered new evidence. Presenting new art I can buy as new evidence. Pointing to a previously uncited section of the same reference used in the rejection in rebuttal to applicant’s argument to clarify a rejection already made using said art, hopefully will not be considered new evidence.

    “The Board will take jurisdiction over appeals as soon as the reply brief is filed, and examiners would no longer have an opportunity to respond to a reply brief.”

    My experience is pretty much in line with what someone else pointed out above. Examiners are already discouraged from responding to reply briefs other than to say it’s been noted and the case is forwarded to the Board.

    Doesn’t matter if a brand new argument which raises new issues is presented in the reply brief and I want to respond. Despite arguments from me otherwise, my SPE has told me to send it to the Board without addressing the new arguments and if the Board wants me to respond to the new argument, they’ll send it back.

    Reply
  5. JD’s a stiff with no sense of humor. Last I saw he was wallowin in the fact that other peeps started copyin my lyrical style.

    Feasible rhymes that you can vision and feel
    Conducted and formed
    This is a hell of a concept

    Reply
  6. “Where’s JD when we need him?”

    I heard his suit swallowed him whole. He’s not been heard from since. But a ghost of his former self does pop up now and again.

    Reply
  7. lulz, gl finding the funding to pay examiners the new required salary to keep anyone at the office: 200k+

    Remind me again why you’re still there, at a salary somewhere south of 200k? Something about logic puzzles, as I recall …

    Where’s JD when we need him?

    Reply
  8. Hello Crisis.

    More than 2/3’s of the apps that applicants feel strong enough to pursue through Appeal don’t make it to the board and yet the board is drowning.

    Ya think maybe weza could do a better job in the first instance O examination?

    Word O the day: Focus.

    Reply
  9. “They need a rule that if the BPAI finds the examiner is wrong to a point of negligence, he/she pays the applicant’s legal costs. A failure to make the finding is appealable to CAFC. ”
    translated: “The examiner attrition rate just isn’t high enough. I love backlogs.”

    Reply
  10. “LULz galore from teh stats.”

    And of course the stats don’t take into account the cases where the panel issues its “proceed to the BPAI” decision and then after the brief is filed, prosecution is re-opened. That happens in about 25% of the “proceed to BPAI” decisions.

    “And yet the Appeal Backlog Mountain grows and grows.”

    It’s simply disgraceful.

    Reply
  11. LULz galore from teh stats.

    nearly 40% at each of both pre-appeal stages getting booted from the appeals process – no doubt due to shoddy examiner work.

    And yet the Appeal Backlog Mountain grows and grows.

    Word O the day: Focus.

    Reply
  12. The Board should take jurisdiction as soon as the appeal brief is filed. No re-opening. Negative impact on primary and SPE ratings for reversals. Same with useless quality assurance do nothing types. Positive impact on ratings for affirmances. No impact on junior examiner ratings.

    Reply
  13. Interstin hint from the HMS over at the Dog that even these Appeal rules run afoul of the Office’ limitation on rulemaking.

    Reply
  14. I never spoke with a Jack McCombs.. EVER. I never sent drawings to a Jack McCombs.
    I also can prove that the drawings I sent KT, are in the Files. He said he never got the Drawings or the Check.. But they have been doctored. There are things on it I can prove I did not put on them. Is that creep enough for YAH?

    Reply
  15. I did have an Examiner cite 7 new references in an Examiner’s Answer (in support of an enablement rejection) without calling it a new ground of rejection. The last thing we wanted was to reopen prosecution, though, so we were happy to proceed to the Board and had enough evidence of record already to support our position.

    For the most part, I wish the Briefs I am working on now would fall under these proposed rules. Here’s my review:

    link to pharmapatentsblog.com

    Reply
  16. “The Rules will no longer require certain statements that simply reiterate information already of record. (e.g., claims appendix and statement on the grounds for rejection).”

    If that means I don’t have to prepare an Appeal Brief and that the Board will simply review the gibberish in the last office action and my reply thereto and that I don’t have to identify support in the specification for each claim being appealed, it sounds perfect.

    Reply
  17. “They need a rule that if the BPAI finds the examiner is wrong to a point of negligence, he/she pays the applicant’s legal costs. A failure to make the finding is appealable to CAFC.

    They need a rule that when the examiner re-opens the case to keep the BPAI from seeing how bad the original rejections were, examiner pays the applicant’s legal costs.

    They need to make it clear that when the examiner re-opens and allows, the applicant gets the appeal fees back. They should be applied toward the issue fee.

    At the very least there should be a right to go into USDC and seek legal costs under EAJA.

    lulz, gl finding the funding to pay examiners the new required salary to keep anyone at the office: 200k+

    Reply
  18. They need a rule that if the BPAI finds the examiner is wrong to a point of negligence, he/she pays the applicant’s legal costs. A failure to make the finding is appealable to CAFC.

    They need a rule that when the examiner re-opens the case to keep the BPAI from seeing how bad the original rejections were, examiner pays the applicant’s legal costs.

    They need to make it clear that when the examiner re-opens and allows, the applicant gets the appeal fees back. They should be applied toward the issue fee.

    At the very least there should be a right to go into USDC and seek legal costs under EAJA.

    Reply
  19. “•The Board will take jurisdiction over appeals as soon as the reply brief is filed, and examiners would no longer have an opportunity to respond to a reply brief.”

    Little effect. We’re already discouraged to respond.

    “•Once it takes jurisdiction, a procedural remand of the case would require Director’s approval.”

    That would probably be a great thing. He doesn’t have time to go over all those kick backs for new IDS’s etc. etc. etc. etc. etc.

    “•An examiner’s answer that includes a rejection based on new evidence will be designated as a new ground of rejection, and applicants will be allowed to delay the appeal in order to await a decision on a petition seeking review of an examiner’s failure to designate a rejection in the answer as a new ground of rejection prior to filing a reply brief.”

    Lulz, I’m pretty sure that if you use new evidence it already is considered a new grounds of rejection. Unless we’re perhaps talking about the examiner providing support for an inherency position taken in the previous rejection which the applicant is just now arguing or something of that nature.

    The petition part is just… um, why give people another way to delay prosecution? Seems like it would be seldom used anyway, most spes can at least tell when there is new evidence being used and would make them designate it as a new grounds anyway I imagine.

    Reply
  20. HMS Boundy,

    I await your views with glee and anticipation!

    Reply

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