2010-20340. Streamlined Procedure for Appeal Brief Review in Inter Partes

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 filed in inter partes reexamination proceeding appeals to increase the efficiency of the appellate process and to reduce the 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 inter partes reexamination proceedings (i.e., appellant's briefs, respondent's briefs, and rebuttal briefs) comply with the applicable regulations, and will complete the determination before the appeal brief is forwarded to the examiner for consideration. The examiner will no longer review appeal briefs for compliance with the applicable regulations. The USPTO expects to achieve a reduction in inter partes reexamination proceeding appeal pendency as measured from the filing of a notice of appeal to the BPAI's docketing of the appeal by eliminating duplicate reviews by the examiner and the BPAI. The USPTO expects further reduction in pendency because the streamlined procedure will increase consistency in the determination, and thereby reduce the number of notices of noncompliant appeal briefs and non-substantive returns from the BPAI that require parties to file corrected appeal briefs in inter partes reexamination proceeding appeals.

DATES:

Effective Date: The procedure set forth in this notice is effective on August 17, 2010.

Applicability Date: The procedure set forth in this notice is applicable to any appeal brief (regardless of whether it is an appellant's brief, a respondent's brief, or a rebuttal brief) that is filed in an inter partes reexamination proceeding on or after August 17, 2010.

FOR FURTHER INFORMATION CONTACT:

Merrell Cashion, 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 an inter partes reexamination proceeding (i.e., an appellant's brief, a respondent's brief, or a rebuttal brief), the Chief Judge will review the appeal brief to determine whether the appeal brief complies with 37 CFR 1.943(c) and 37 CFR 41.67, 41.68, or 41.71 before it is forwarded to the Central Reexamination Unit (CRU) or other Technology Center examiner for consideration. The Chief Judge will endeavor to complete this determination within one month from the filing of the appeal brief. To assist parties in complying with 37 CFR 1.943(c), 41.67, 41.68, and 41.71, the BPAI has provided a checklist 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 1.943(c) and 37 CFR 41.67, 41.68, or 41.71, 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 1.943(c) and 37 CFR 41.67, 41.68, or 41.71, and sends appellant, respondent, or rebutting party a notice of noncompliant brief requiring a corrected brief, the party 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 1.943(c) and 37 CFR 41.67(d), 41.68(c), or 41.71(e). The Chief Judge will also have the sole responsibility for determining whether corrected appeal briefs comply with 37 CFR 1.943(c) and 37 CFR 41.67, 41.68, or 41.71, and will address any inquiries and petitions regarding entry of appeal briefs or notices of noncompliant appeal briefs.

The Chief Judge's responsibility for determining whether appeal briefs comply with 37 CFR 1.943(c) and 37 CFR 41.67, 41.68, or 41.71 is not considered a transfer of jurisdiction when an appeal brief is filed, but rather is only a transfer of the specific responsibility to notify appellants under 37 CFR 1.943(c) and 37 CFR 41.67(d) 41.68(c), or 41.71(e) of the reasons for non-compliance. The Patent Examining Corps retains the jurisdiction over the inter partes reexamination proceeding to consider the appeal brief, conduct any conference, draft an examiner's answer, and decide the entry and consideration 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)-(c).

Once the Chief Judge accepts the appellant's brief, respondent's brief, or rebuttal brief as compliant, an examiner's answer will be provided in the inter partes reexamination proceeding if the examiner determines that the appeal should be maintained. The format for the examiner's answer will be streamlined such that the examiner may incorporate by reference any of the examiner's positions (e.g., rejections) previously made on the record. The examiner will treat all pending claims in the proceeding as being on appeal. If the notice of appeal, notice of cross appeal, or appeal brief identifies fewer than all of the rejected or non-rejected claims as being appealed, the issue will be addressed by the BPAI panel. The jurisdiction of the inter partes reexamination proceeding will be transferred to the BPAI when a docketing notice is entered after the time period for filing the last rebuttal brief (if appropriate) expires or the examiner acknowledges the receipt and entry of the last rebuttal brief. After taking jurisdiction, the BPAI will not return or remand the inter partes reexamination proceeding to the Patent Examining Corps for issues related to a noncompliant appeal brief.

Date: July 20, 2010.

David J. Kappos,

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