Friday, March 16, 2007

2004 Rules of Practice Before the Board of Patent Appeals and Interferences

On August 14, 2004, the U.S. Patent and Trademark Office published substantial changes relating to the rules of practicing before the Board of Patent Appeals and Interferences.

The rule change notice can be found here:

The rule changes were effective September 13, 2004. The stated purpose of the rule changes was to reflect new procedures to significantly overhaul the operations of the Board to address concerns about the duration of proceedings before the Board.

Among other changes, 37 C.F.R. Section 116 was amended to limit amendments after a final office action to such amendments filed before or with an appeal under sections 41.31 or 41.61.

Section 41.37 was added to incorporate the requirements of former 37 C.F.R. Section 192. In addition, the following changes were made:

-One copy of the Appeal Brief became required rather than three copies, consistent with the Office's move to an electronic file wrapper.

-The deadline for filing the Brief became two months from the date of the Notice of Appeal even if the time allowed for reply to the Office Action was later.

-A statement became required in the Brief identifying the real party in interest even if the party named in the caption of the brief is the real party in interest.

-Identification became required of all other prior and pending appeals, interferences or judicial proceedings known to appellant, the appellant's legal representative, or assignee which may be related to, directly affect or be directly affected by or have a bearing on the Board's decision in the pending appeal.

-Both a statement of the status of all the claims (e.g., rejected, allowed or confirmed, withdrawn, objected to, canceled) and an identification of those claims being appealed became required.

-A concise explanation of the invention became required FOR EACH of the independent claims involved in the appeal, which explanations were to refer to the specification by page and line number, and to the drawings, if any, by reference characters. This new requirement to annotate each independent claim resulted in a substantial increase in the amount of time required to prepare an appeal brief, and added costs to applicants.

-A concise statement listing each ground of rejection presented for review became required rather than issues for review.

-The previous grouping of claims requirement was removed.

-A paragraph was added to require appellants to include an evidence appendix of any evidence relied upon by appellant in the appeal with a statement setting forth where that evidence was entered in the record by the examiner. After this rule change, the U.S. Patent and Trademark Office began to bounce appeal briefs that did not include evidence appendices, even if the appellant didn't intend to present evidence. Instead, the USPTO wanted a sheet titled "Evidence Appendix" including a statement to the effect that there was no evidence appendix.

-A paragraph was added to require appellants to include a related proceeding appendix containing copies of decisions rendered by a court or the Board in any related proceedings. After this rule change, the USPTO began to bounce appeal briefs that did not include related proceeding appendices, even if there were no related proceedings.

-A paragraph was added to permit a new ground of rejection to be included in an examiner's answer.

-A paragraph was added stating that when an examiner's answer sets forth a new ground of rejection, appellant is required within two months to either request that prosecution be reopened by filing a reply, or to file a reply brief.

-Paragraph (a)(1) of Section 41.43 set forth the ability of the examiner to withdraw a final rejection and reopen prosecution as an alternative to the use of a supplemental examiner's answer. Some examiners have adopted a strategy of reopening prosecution, citing a new reference, if an applicant files an appeal brief. Sometimes, they will do this more than one time, denying the ability of the applicant to reach the Board of Appeals. A new Brief must be prepared by an applicant, resulting in substantial expenses.

A large number of other changes were also made. Various technical changes were made, such as to define terms, and move or rearrange rules. There were also changes relating to reexamination procedures, as well as other changes.