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Archived updates for Tuesday, July 31, 2007

USPTO Proposes Administrative Appellate Practice Changes

In an effort to avoid the predicted bottleneck at the Board of Patent Appeals and Interferences (BPAI) due to USPTO's upcoming patent continuation practice changes, the Office proposed rule changes on July 30, 2007 that are designed to help the Board “continue to resolve ex parte appeals in a timely manner.” According to the proposal's summary,

The proposed rules seek to provide examiners and Office reviewers with a clear
and complete statement of an appellant’s position at the time of filing an
appeal brief so as to enhance the likelihood that appealed claims will be
allowed without the necessity of further proceeding with the appeal, minimize
the pendency of appeals before the Office, minimize the need for lengthy patent
term adjustments in cases where claims become allowable as a result of an action
by the Board in an appeal, provide uniform treatment of requests for an
extension of time filed after an appeal brief is filed, and make the
decision-making process more efficient. . . . Written comments must be received
on or before September 28, 2007. No public hearing will be held.

. . . The Board is currently experiencing a large increase in the number of ex
parte appeals. In FY 2006, the Board received 3,349 ex parte appeals. In FY
2007, the Board expects to receive more than 4,000 ex parte appeals. In FY 2008,
the Board expects to receive over 5,000 ex parte appeals. These rules are proposed to change procedures in such a way as to allow the Board to continue to resolve ex parte appeals in a timely manner. The proposed rules do not propose to change any of the rules relating to inter partes reexamination appeals. Nor do the proposed rules propose to change any of the rules relating to contested cases. In some instances, the rules propose to adopt practices similar to those of the Court of Appeals for the Federal Circuit. For example, an appendix would be required, page limits would be
set, and a table of contents and a table of authorities would be required in briefs.

Professor Wegner predicts "The new rules, if enacted, will frustrate attempts to use the appeals route in lieu of filing unlimited continuing applications under the final continuing applications rules that are expected as early as the week of August 13, 2007 (and which will have a 60 day period from the publication date until they become effective)."

"The general tenor is consistent with the other rule packages - applicants must do all the work, and must spend pages and pages explaining peripheral stuff that has no relation to any issue in controversy. Paradoxically, the rule proposes to impose a page limit," adds David E. Boundy of Cantor Fitzgerald LP

Read the (over 22,000-word) proposed rule change here.
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