2010-7034. Streamlined Procedure for Appeal Brief Review

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Notice.

SUMMARY:

The United States Patent and Trademark Office (USPTO) is streamlining the procedure for the review of appeal briefs to increase the efficiency of the appeal process and reduce pendency of appeals. The Chief Judge of the Board of Patent Appeals and Interferences (BPAI) or his designee (collectively, “Chief Judge”), will have the sole responsibility for determining whether appeal briefs filed in patent applications comply with the applicable regulations, and will complete the determination before the appeal brief is forwarded to the examiner for consideration. The Patent Appeal Center and the examiner will no longer review appeal briefs for compliance with the applicable regulations. The USPTO expects to achieve a reduction in appeal pendency as measured from the filing of a notice of appeal to docketing of the appeal by eliminating duplicate reviews by the examiner, Patent Appeal Center, and the BPAI. We are expecting further reduction in pendency because the streamlined procedure will increase consistency in the determination, and thereby reduce the number of notices of noncompliant appeal brief and non-substantive returns from the BPAI that require appellants to file corrected appeal briefs.

DATES:

Effective Date: The procedure set forth in this notice is effective on March 30, 2010.

Applicability Date: The procedure set forth in this notice is applicable to appeal briefs filed in patent applications on or after March 30, 2010.

FOR FURTHER INFORMATION CONTACT:

Krista Zele, Case Management Administrator, Board of Patent Appeals and Interferences, by telephone at [phone] or by electronic mail at [e-mail].

SUPPLEMENTARY INFORMATION:

Under the streamlined procedure, upon the filing of an appeal brief in a patent application, the Chief Judge will review the appeal brief to determine whether the appeal brief complies with 37 CFR 41.37 before it is forwarded to the examiner for consideration. The Chief Judge will endeavor to complete this determination within one month from the filing of the appeal brief. To assist appellants in complying with 37 CFR 41.37, the BPAI has posted checklists for notices of appeal and appeal briefs and a list of eight reasons appeal briefs have been previously held to be noncompliant, on the USPTO Web site at http://www.uspto.gov/​ip/​boards/​bpai/​procedures/​guidance_​noncompliant_​briefs.jsp. If the appeal brief is determined to be compliant with 37 CFR 41.37, the Chief Judge will accept the appeal brief and forward it to the examiner for consideration. If the Chief Judge determines that the appeal brief is not compliant with 37 CFR 41.37 and sends appellant a notice of noncompliant brief requiring a corrected brief, appellant will be required to file a corrected brief within the time period set forth in the notice to avoid the dismissal of the appeal. See 37 CFR 41.37(d). The Chief Judge will also have the sole responsibility for determining whether corrected briefs comply with 37 CFR 41.37, and will address any inquiries and petitions regarding notices of noncompliant briefs.

The Chief Judge's responsibility for determining whether appeal briefs comply with 37 CFR 41.37 is not considered a transfer of jurisdiction when an appeal brief is filed, but rather is only a transfer of the specific responsibility of notifying appellant under 37 CFR 41.37(d) of the reasons for non-compliance. The Patent Examining Corps retains the jurisdiction over the application to consider the appeal brief, conduct an appeal conference, draft an examiner's answer, and decide the entry of amendments, evidence, and information disclosure statements filed after final or after the filing of a notice of appeal. Furthermore, petitions concerning the refusal to enter amendments and/or evidence remain delegated to the Patent Examining Corps as provided in the Manual of Patent Examining Procedure (MPEP) §§ 1002.02(b) and (c).

Once the Chief Judge accepts the appeal brief as compliant, an examiner's answer will be provided in the application if the examiner determines that the appeal should be maintained after an appeal conference is conducted. See MPEP §§ 1207-1207.02. The examiner will treat all pending, rejected claims as being on appeal. If the notice of appeal or appeal brief identifies fewer than all of the rejected claims as being appealed, the issue will be addressed by the BPAI panel. The jurisdiction of the application will be transferred to the BPAI when a docketing notice is entered after the time period for filing a reply brief expires or the examiner acknowledges the receipt and entry of the reply brief. After taking jurisdiction, the BPAI will not return or remand the application to the Patent Examining Corps for issues related to a noncompliant appeal brief.

This notice does not apply to reexamination proceedings. The Office is considering a streamlined procedure for review of briefs filed in reexamination proceedings, in which the Chief Judge will also have the sole responsibility for determining whether briefs filed in ex parte reexamination proceedings comply with 37 CFR 41.37 and briefs filed in inter partes reexamination proceedings comply with 37 CFR 41.67, 41.68, and 41.71.

Dated: March 24, 2010.

David J. Kappos,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.