State of Innovation

Patents and Innovation Economics

New Ex-Parte Appeals Rules from the USPTO

The USPTO just issued new rules for ex-parte Appeals.  These changes appear to be an honest attempt to reduce the unnecessary paper work and formalities associated with Appeals.  They also attempt to deal with Examiner’s introducing new grounds of rejections during appeals.  However, they do not deal with the churning of Appeals where the PTO decides to reopen prosecution and this process repeats itself several times with no resolution for the applicant.  Here are the notable changes according to the USPTO:

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.



December 1, 2011 - Posted by | -Prosecution, Patents

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