Proposed Modifications to Rules Governing Appeals Before the Board of Patent Appeals and Interferences Would Bring New Challenges to Appellants

November 15, 2010
News | Patents | USPTO

On November 15, 2010, the United States Patent and Trademark Office (USPTO) issued a Notice of Proposed Rule Making and request for comments, proposing modifications to the rules governing appeals before the Board of Patent Appeals and Interferences in Ex Parte Appeals. The proposed rules would rescind the stayed final appeals rules originally issued on June 10, 2008, slated to take effect later that year on December 10, but stayed indefinitely in a notice issued on that date.

The presently proposed rules appear to be an attempt to simplify the current rules, principally as regards the requirements for a compliant appeal brief. Although the proposed rules do eliminate some of the problematic sections currently required in an appeal brief, these rules do impose new and equally complex requirements upon appellants. For example, while the proposed rules eliminate the absolute requirement to identify the “real party in interest,” appellants must still do so otherwise the office will assume that the named inventors are the real party in interest.

Similarly, while the proposed rules eliminate the requirement for an identification of related appeals and interferences, failing to list such related proceedings raises the default assumption that none exist. Thus, appellants will still have to review these issues to ensure accuracy, if not compliance. Where these sections are omitted, under the proposed rules, no Notice of Noncompliance will be issued but the above assumptions will apply. Neither the consequences of a failure to accurately provide this information, nor any ability of the appellant to rebut the resulting assumptions, are spelled out in the rules.

Moreover, while the proposed rules eliminate the necessity to provide a listing of the status of the claims, appellants must now provide a “statement of last entered amendment” identifying, by date of filing, the last entered amendment to the claims. If no amendment is identified, the office will assume that there are no amendments to the claims. As above, the assumption replacing the Notice of Non-Compliant Brief formerly received has unstated consequences if, in fact, the claims have been amended. Appellants would be well advised to pay particular attention to this portion of the rule, should it be adopted in this form, at least until it becomes known whether the assumption is rebuttable.

Perhaps most troubling in the proposed rule change is the modification of the requirement for a Summary of Claimed Subject Matter, with that of an “annotated copy of each rejected independent claim.” The proposed rules state that the annotations would appear “after each limitation in dispute by Appellant and include a reference to the specification in the record showing support for the claimed language sufficient to allow the Board to understand the claim.” Unfortunately, the proposed rule does not further define when a limitation is “in dispute”, i.e., whether this term is intended to be broad enough to cover any claimed feature asserted to provide patentability, or merely the limitation whose scope is the subject of disagreement between the PTO and the appellant. Moreover, this requirement does not provide further explanation of how much support is “sufficient to allow the Board to understand the claim.”

One positive aspect to the proposed rule is that it substantially broadens the situations which will be considered as a new ground of rejection, thus providing appellants opportunity to reopen prosecution. The rules state that any citation for the first time of a new reference, even if “cited to support the rejection in a minor capacity,” will be designated as a new ground of rejection. Moreover, a “position or rationale new to the proceedings, even if based on evidence previously of record” may be sufficient to give rise to a new ground of rejection. The discussion of the proposed rules in the Federal Register indicates that changing the statutory basis of rejection, for example, from §103 to §102, would give rise to a new ground of rejection, as would reliance on a different portion of a reference of record beyond that previously relied on.

Comments on the proposed new rules are due on January 14, 2011.

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