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.
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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.