New Ex Parte Appeals Rules
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New Ex Parte Appeals Rules




The United States Patent and Trademark Office (USPTO) has set forth new rules regarding the ex parte appeal process before the Patent Trial and Appeal Board. The new rules took effect on January 23, 2012, with a majority of the changes being directed to the contents of Applicant’s appeal brief. The rules are intended to reduce the burdens placed on Applicants during the appeal process and also reduce the pendency of appeals in general, in an effort to reduce the backlog of appeals at the USPTO. Below is a link to a presentation discussing the new rules.

Please contact us if you would like more information on the new ex parte appeal rules.



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New Ex Parte Appeals Rules New Ex Parte Appeals Rules Presentation Transcript

  • New Ex Parte Appeal Rules Patent and Trademark Practice Group Meeting January 26, 2012
  • Effective Date of New Rules
    • Monday, January 23, 2012
      • Notice of Appeal filed Monday or after
    • same : Grounds for Appeal
      • Any claim rejected twice
      • Appeal v. Petition (rejection v. objection)
    • same : Timing
      • Notice of Appeal: within time period for reply set forth in the Office Action
      • Brief: within 2 months of Notice of Appeal (extendable for another 5 months)
  • Appeal Brief
        • * = can be left out (Board will assume inventor and no related cases)
        • ** = many sections still recommended if helpful to your case
    Still Required No Longer Required ** Was Never Required ** *Real party in interest Status of claims Table of contents *Related appeals and interferences Status of amendments Table of authorities Summary of claimed subject matter Grounds of rejections to be reviewed on appeal Argument Evidence appendix Claims appendix Related proceedings appendix
  • Appeal Brief
    • Rule change : What claims are on appeal?
      • appeal taken from all claims unless canceled (old rule: designated claims)
    • Rule change : Scope of “related appeals and interferences”
      • (1 new ): involve application or patent owned by appellant or assignee;
      • (2 same ): known to appellant, assignee, or legal representative; AND ,
      • (3 same ): related to, directly affect or affected by, or having a bearing on Board’s decision)
    • Rule change : Argument section must explicitly identify and explain error by examiner
      • Each heading must include claim number / statutory basis / cited art (e.g., “The Smith reference does not anticipate Claim 1 because it does not teach the use of X”)
      • Separate headings for each argument
      • Separate headings for claims argued separately or as a group
    • Rule change : Petition the Chief APJ for review of rejection of noncompliant brief
  • Appeal Process
    • Name change : Board of Patent Appeals and Interferences (BPAI) to Patent Trial and Appeal Board (PTAB)
    • General rule: no new evidence on appeal
      • New exception : dictionary citations
    • Rule change : Board’s jurisdiction over appeal
      • Old : Examiner had to “acknowledge” reply brief, and could optionally file Examiner’s Response to Reply Brief, before jurisdiction passed to Board
      • New : Jurisdiction passes to Board after Reply Brief filed, eliminates Examiner’s Response to Reply Brief
  • Procedure
    • Overview
      • Appeal Brief
      • Examiner’s Answer
      • Reply Brief – within 2 months from Examiner’s Answer
      • Examiner’s Response to Reply Brief
      • Oral Hearing – request within 2 months from Examiner’s Answer
    • If Examiner designates a new ground of rejection in Examiner’s Answer, Applicant may:
      • Reopen prosecution by filing Response under 37 CFR 1.111
      • Maintain appeal by filing Reply Brief
  • Procedure – Board’s Options
    • Option (1) affirm
    • Option (2) reverse
      • The Examiner may (a) allow the case, or (b) reopen prosecution and enter a new rejection
      • Important distinction : reversal is not allowance, the Examiner (not the Board) allows the case
    • Option (3) remand
      • Board may note a specific reason for remand:
        • For further prosecution where the Board feels that the most pertinent art has not been cited
        • For further consideration of rejection
        • To consider amendment or evidence
    • Option (4) new ground of rejection
      • Applicant may (a) request to reopen prosecution before Examiner with new amendment or new evidence in response, or (b) request rehearing before Board with just arguments against new ground of rejection
    • If Dissatisfied with Board Decision:
      • Request Rehearing (within 1 month)
      • Appeal to the Fed. Cir. (within 2 months)
      • File Civil Action (within 2 months)