USPTO Amends Rules Related to the Appeal of Rejected Patent Claims

The United States Patent and Trademark Office (“USPTO”) has amended the rules governing practice before the Board of Patent Appeals and Interferences (Board or BPAI) in ex parte patent appeals. The rules apply to patent applications in which an appeal is filed by the applicant because the applicant does not agree with the patent examiner’s decision.  The rules have been amended 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 Office action from which the appeal is taken shall be designated as a new ground of rejection.
• The Office also withdraws a previously published final rule that never went into effect.

The changes to the rules on appeals are designed to reduce work required by the patent examiner and by the appellant.  For example, statements of the status of, claims, the status of amendments, and the grounds of rejection to be reviewed on appeal are no longer required in the appeal brief. or in the examiner’s answer.  Also, the final rule no longer requires appellants to file an evidence appendix or a related proceedings appendix.  Because much of this information is already available in the Image File Wrapper which is part of the patent application file, the USPTO now considers it is unnecessary for appellants or examiners to provide this information to the Board. Moreover, by eliminating these briefing requirements, the Office expects to reduce the number of non-compliant appeal briefs and the number of examiner’s answers returned to the examiner due to non-compliance, which are a significant cause of delays on appeal.

Another purpose of this final rule is to eliminate any gap in time from the end of briefing to the commencement of the Board’s jurisdiction. For example, under the final rule, the Board takes jurisdiction upon the earlier of the filing of a reply brief or the expiration of the time in which to file a reply brief. Examiners are no longer required to acknowledge receipt of the reply brief.

The final rule is also intended to clarify and simplify petitions practice on appeal. For example, except under limited circumstances, any information disclosure statement or petition filed while the Board possesses jurisdiction over the proceeding will be held in abeyance until the Board’s jurisdiction ends.

The USPTO will provide improved guidance in the Manual of Patent Examining Procedure (MPEP), discussed infra, as to what constitutes a new ground of rejection in an examiner’s answer. The final rule explicitly sets forth the procedure under which an appellant can seek review of the Office’s failure to designate a new ground of rejection in either an examiner’s answer or in a Board decision.

Another purpose of this final rule is to reduce confusion as to which claims are on appeal. For example, under the final rule, the Board will presume that the appeal is taken from the rejection of all claims under rejection unless cancelled by an applicant’s amendment. This rule simplifies practice for appellants who seek review of all claims under rejection—the majority of appellants— by obviating the need to enumerate the rejected claims that are being appealed. Under the previous practice, if an appellant incorrectly listed the claims on appeal, or was silent in the brief as to some of the claims under rejection, then the Office assumed that such claims were not on appeal, and noted that those non-appealed claims should be cancelled by the examiner. Ex parte Ghuman, 88 USPQ2d 1478, 2008 WL 2109842 (BPAI 2008) (precedential) (holding that when appellant does not appeal some of the claims under rejection and does not challenge the Examiner’s rejection of these claims, the Board will treat these claims as withdrawn from the appeal, which operates as an authorization for the Examiner to cancel those claims from the application). This final rule avoids the unintended cancellation of claims by the Office due to appellant’s mistake in the listing of the claims in either the notice of appeal or in the appeal brief.

This final rule replaces the Office’s procedure under Ghuman and also simplifies practice for examiners by no longer requiring examiners to cancel non-appealed claims.

The changes to the rules on appeal of patent cases to the Board of Patent Appeals and Interferences becomes effective on January 23, 2012.  The full announcement of the changes were published in the Federal Register on November 22, 2011, available here.  Please contact our office if you would like to discuss the status of your pending patent application and how the amendments to the rules may affect your application.