The United States Patent and Trademark Office (USPTO) published the amended rules governing practice before the Board of Patent Appeals and Interferences (Board or BPAI) in ex parte patent appeals.
The USPTO amends the rules to:
Remove several of the briefing requirements for an appeal brief, provide for the Board to take jurisdiction over the appeal earlier in the appeal process, no longer require examiners to acknowledge receipt of reply briefs, create specified procedures under which an appellant can seek review of an undesignated new ground of rejection in either an examiner’s answer or in a Board decision, provide that the Board will presume that the appeal is taken from the rejection of all claims under rejection unless cancelled by an applicant’s amendment, and clarify that, for purposes of the examiner’s answer, any rejection that relies upon evidence not relied upon in the USPTO action from which the appeal is taken shall be designated as a new ground of rejection.
The notable changes to the rules are:
(1) The Board will presume that an appeal is taken from the rejection of all claims under rejection unless cancelled by an amendment filed by appellant (final Bd.R. 41.31(c));
(2) the Board will take jurisdiction upon the filing of a reply brief or the expiration of time in which to file such a reply brief, whichever is earlier (final Bd.R. 41.35(a));
(3) the requirements to include statements of the status of claims, status of amendments, and grounds of rejection to be reviewed on appeal and the requirements to include an evidence appendix and a related proceedings appendix are eliminated from the appeal brief (final Bd.R. 41.37(c));
(4) the Board may apply default assumptions if a brief omits a statement of the real party-in-interest or a statement of related cases (final Bd.R. 41.37(c)(1)(i) and (ii));
(5) for purposes of the examiner’s answer, any rejection that relies upon Evidence not relied upon in the Office action from which the appeal is taken (as modified by any advisory action) shall be designated as a new ground of rejection (final Bd.R. 41.39(a)(2));
(6) an appellant can 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 (final Bd.R. 41.40) and thereby avoid having to file a request for extension of time in which to file the reply brief; and
(7) the examiner’s response to a reply brief is eliminated (final Bd.R. 41.43 [removed]). A more detailed discussion of the final rule follows.
Further information relevant to particular rules appears in the analysis of comments portion of the final rule.
Applicability Date: This rule is applicable to all appeals in which a notice of appeal is filed on or after January 23, 2012.