United States Patent and Trademark Office OG Notices: 12 October 2004
Clarification of the Effective Date Provision in the
Rules of Practice before the
Board of Patent Appeals and Interferences
(Final Rule)
The effective date provision in the Rules of Practice before
the Board of Patent Appeals and Interferences (Final Rule) (hereinafter
BPAI final rule) states that September 13, 2004 is the effective date.
See Rules of Practice Before the Board of Patent Appeals and
Interferences (Final Rule), 69 Fed. Reg. 49959
(August 12, 2004). The U.S. Patent and Trademark Office (Office) has
received inquiries as to how the effective date provision applies to
certain situations. This notice provides clarification as to how the
Office is implementing the effective date provision.
Generally, any paper filed by applicants or mailed by the Office
after September 13, 2004 must comply with the rules as set forth in the
BPAI final rule. Appeal briefs filed prior to September 13, 2004 must
either comply with former Sec. 1.192 or new Sec. 41.37. A certificate of
mailing or transmission in compliance with Sec. 1.8 will be applicable to
determine if a paper was filed prior to the effective date of September
13, 2004 in order to determine which rule applies. Examples of certain
situations are set forth in the questions and answers below. Additional
questions and answers concerning the BPAI final rule are available on
the USPTO web site at www.uspto.gov.<hhttp://www.uspto.gov.>
Questions related to Time Periods for Filing of Papers Related to After
Final Practice and Ex Parte Appeals:
Question 1. If a notice of appeal is filed before September 13, 2004,
the effective date of the BPAI final rule, when is the appeal brief due?
If the notice of appeal is filed before September 13, 2004, the
time period for filing an appeal brief will be he time period set forth
in former Sec. 1.192(a) which provides that the appellant must file an
appeal brief: (1) within two months from the date of filing of the
notice of appeal; or (2) within the time allowed for reply to the
action from which the appeal was taken, if such time is later.
The time period set forth in former Sec. 1.192(a) also applies if the
notice of appeal is filed with a certificate of mailing or transmission
in compliance with Sec. 1.8 and the date on the certificate of mailing or
transmission is before the effective date of September 13, 2004, but
the notice of appeal is received by the Office on or after September
13, 2004. The two month time period will begin on the date of receipt
of the notice of appeal.
Question 2. If appellant reinstates the appeal after the prosecution is
reopened by filing a second notice of appeal on or after the effective
date, when is the second appeal brief due?
Appellant must file the second appeal brief (in compliance with
the format and content requirements of Sec. 41.37(c)) within two months
from the date of filing the second notice of appeal, even if the first
notice of appeal and the first brief were filed before the effective
date. The two month time period is extendable under the provisions of
Sec. 1.136 for patent applications and Sec. 1.550(c) for ex parte
reexamination proceedings. See Sec. 41.37(e).
Question 3. If a notice of appeal is filed on or after the effective date
of September 13, 2004, would extensions of time under Sec. 1.136(a) be
required when a Request for Continued Examination (RCE) under Sec. 1.114
or an amendment is filed after two months from the date of filing the
notice of appeal, but within three months from the mailing of the action
from which the appeal was taken?
Yes, extensions of time under Sec. 1.136(a) are required for filing
an RCE or amendment after two months from the filing of the notice of
appeal, even if the RCE or amendment is filed within the three months
from the mailing of the action from which the appeal was taken.
Questions related to Appeal Brief Contents or Requirements for Papers
Filed after Appeal:
Question 4. If the notice of appeal is filed before the effective date
of September 13, 2004 and the brief is filed by appellant on or after the
effective date, would the appeal brief be required to comply with the
content and format requirements of Sec. 41.37(c)?
Yes, any appeal brief filed on or after September 13, 2004 must be in
compliance with the requirements set forth in Sec. 41.37(c) and be
accompanied by the appropriate fee under Sec. 41.20(b)(2). If the brief
does not comply with Sec. 41.37(c), an amended brief will be required
under Sec. 41.37(d).
Exception: If the appeal brief is filed with a certificate of mailing
or transmission under Sec. 1.8 and the date on the certificate of mailing
or transmission is before September 13, 2004, the appeal brief may comply
with either former Sec. 1.192 or new Sec. 41.37, even if the appeal brief
is received by the Office on or after September 13, 2004.
Question 5. Would the Office accept an appeal brief filed before the
effective date of September 13, 2004 that is in compliance with Sec.
41.37(c)?
Yes, a brief filed before September 13, 2004 that is compliant with
the new Sec. 41.37(c) will be acceptable.
Question 6. If an appeal brief filed before the effective date of
September 13, 2004 fails to comply with the content and format
requirements of Sec. 1.192 and the Office mails appellant a Notice that
correction is required, would an amended appeal brief filed on or after
the effective date be required to be in compliance with Sec. 41.37(c)?
No, an amended appeal brief, based on an appeal brief originally filed
prior to September 13, 2004, would be acceptable if it complies with
either former Sec. 1.192 or Sec. 41.37(c), regardless of when the Office
mailed a Notice requiring correction of the noncompliant appeal brief.
Question 7. If, after a final rejection or an appeal, applicant or
appellant filed an amendment, affidavit or other evidence on or after the
effective date, will the revised or new rules in the BPAI final rule apply?
Any affidavit or other evidence filed after a final rejection, or an
appeal, on or after the effective date, will be subject to the revised or
new rules (i.e., the revised Sec. 1.116 or new Sec. 41.33).
Questions related to Examiner's Answers and Supplemental Examiner's
Answers:
Question 8. If the appeal brief is filed before the effective date of
September 13, 2004, but the examiner's answer is mailed on or after the
effective date, can the examiner's answer include a new ground of
rejection?
Yes, an examiner's answer mailed on or after September 13, 2004 may
include a new ground of rejection (with Technology Center Director or
designee approval) in compliance with Sec. 41.39. Any examiner's answer
mailed before September 13, 2004, however, may not include a new ground
of rejection. See former Sec. 1.193.
Question 9. Can the examiner provide a supplemental examiner's answer
under Sec. 41.43 on or after the effective date of September 13, 2004
in response to any new issue raised in a reply brief that was filed
before the effective date?
Yes, the examiner may provide a supplemental examiner's answer (with
Technology Center Director or designee approval) if it is mailed on or
after September 13, 2004 in response to any new issue raised in a reply
brief, even if the reply brief was filed before September 13, 2004.
Appellant may file another reply brief in compliance with Sec. 41.41 to
reply to the supplemental examiner's answer within two months from the
date of mailing of the supplemental examiner's answer.
Extensions of time under Sec. 1.136(a) are not applicable to the two-month
time period.
Question 10. If the Board remanded an application before the effective
date of September 13, 2004 for further consideration of a rejection, and
the examiner provides a supplemental examiner's answer on or after the
effective date (in response to the remand by the Board), can appellant
request that prosecution be reopened under Sec. 41.50(a)(2)(i)?
No, appellant may not request that prosecution be reopened under Sec.
41.50(a)(2)(i) in response to the supplemental examiner's answer since
the Board remanded the application before the effective date. Appellant
may request that prosecution be reopened in response to a supplemental
examiner's answer written in response to the remand by the Board, only if:
(1) the remand is on or after the effective date, and (2) the remand is
for further consideration of a rejection. The Board should indicate in the
remand if Sec. 41.50(a)(2)(i) applies. Thus, appellant may not request
that prosecution be reopened under Sec. 41.50(a)(2)(i) if the remand is
for another reason.
FOR FURTHER INFORMATION CONTACT: Kery Fries, Senior Legal Advisor in the
Office of Patent Legal Administration, by telephone at (703) 308-6906 or
(571) 272-7704 on or after September 29, 2004, or by e-mail addressed
to Kery.Fries@USPTO.gov.
STEPHEN G. KUNIN
Deputy Commissioner
for Patent Examination Policy