by Dennis Crouch
There are now 25,000 ex parte cases pending resolution before the Board of Patent Appeals and Interferences. For the most part, cases being decided today are appeals from final rejections mailed back in 2008 – at a time when the backlog was 80% less than today. And, as the chart below demonstrates, the backlog continues to grow at an alarming pace. Today, the USPTO published a new set of final rules of practice regarding ex parte patent appeals before the Board. The new rules do not directly address the backlog, but do refer to "streamlining" as an important purpose of the rules. As an aside, the recently published FY2011 USPTO Performance Report also fails to mention the BPAI backlog.
New Rules: The newly published rules are designed to "streamline" practice before the Board of Patent Appeals and Interferences (BPAI) and only apply to ex parte patent appeals. As published, the rules will become effective in on January 21, 2011. The PTO had previously published a similar final that never went into effect and that is now formally withdrawn.
Jurisdiction: The Board will take jurisdiction over appeals automatically upon either the filing of the reply brief or expiration of the reply briefing filing deadline. Examiners will no longer be required to acknowledge the filing of a reply brief before the Board claims jurisdiction. (Historically, awaiting examiner acknowledgement took an average of 55 days).
Petitions During Appeal: Under the new rule, any petition (or information disclosure statement) filed while the Board possesses jurisdiction over the proceeding will be held in abeyance until the Board's jurisdiction ends and will not be considered "of record" in the appeal. The primary exception to this is with regard to 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. In that case, the applicant can await the petition decision and thereby avoid having to file a request for extension of time in which to file the reply brief.
New Grounds of Rejection: The rules clarify that an argument in the examiner's answer that uses evidence that was not relied upon in the office action will be considered a new ground of rejection. In addition, a rejection will be considered a "new grounds" when the "basic thrust" of the rejection as presented in the examiner's answer or the Board's decision is different than that presented in the office action. However, an examiner or Board's use of certain extrinsic evidence such as dictionaries will not, according to the new rules, automatically result in a new ground of rejection. The rules also include a loosening of the requirements on requests for re-hearing so that an applicant can present new arguments in a request for rehearing that respond to the merits of a new ground of rejection and allows the applicant to request rehearing for the purposes of arguing that the Board's decision contains an undesignated new ground of rejection.
Removal of Briefing Requirements: Removal of several briefing requirements, including statements of the status of claims, the status of amendments, and the grounds of rejection to be reviewed on appeal as well as an evidence appendix or a related proceedings appendix.
Claims Being Appealed: The new rule will require the Board to presume that the applicant is appealing all rejected claims.