Patent Law Practice Center

Summary of USPTO New Rules of Practice for Ex Parte Appeals: Change and Simplification for 2012

In just a few weeks, new rules of practice for ex parte appeals before the Board of Patent Appeals & Interferences (BPAI) become effective. The new rules introduce helpful simplifications relative to existing practice and provide for enhanced procedural monitoring to reduce unnecessary appeals. I sat in on the recent PLI One Hour Briefing entitled,”USPTO’s New Rules of Practice for Ex-Parte Appeals: Change and Simplification for 2012″ to become more acquainted with the procedural changes and guidelines to come. The briefing was lead by Scott A. McKeown and Lee E. Barrett, members of Oblon Spivak L.L.P..

Here are some of the highlights:

• The new rules provide changes as well as clarifications. Changes include simplified briefing requirements for appellants and examiners alike, jurisdiction over appeals for when it passes from examiner to the Board, new procedures for challenging undesignated new grounds of rejection, and all rejected claims will be assumed appealed. Clarifications focus on petitions and information disclosure statements during appeal.
• An appeal is presumed to be taken from the rejection of all claims under rejection unless canceled by an amendment filed by the applicant and entered by the office.
• The change of the Board getting jurisdiction over appeal formalizes the streamlined procedure for Appeal Brief review from 2010. This eliminated wasted time before the Board gets jurisdiction, and is more complete than the previous rule.
• Clarifications made to Section 41.37 simplify the briefing experience for appellants. The clarifications set up how the content should be formatted. It is very important to be careful with one’s formatting of an appellate brief, as mistakes in formatting serve as the biggest reason for briefs to get rejected.
• Examiners do not have to provide a statement of grounds of rejection on appeal since appellants are no longer required to do so.
• A summary of claimed subject matter should be done for every claim that is argued separately; a short introduction to the invention is helpful.
• Appellants can raise new arguments in the appeal brief. The burden is on the appellant to explain why the examiner erred. They then must simply point out the error and get on with the point.
• Not every decision can be appealed. A new ground for rejection can be changing the statutory basis of your argument, new calculations in support of overlapping ranges, or new structure in support of structural obviousness.