| Appeals and Interferences |
Referenced Items (243, 244, 245, 246, 247, 248, 249, 250, 251, 252, 253, 254, 255) |
(251) Revised Docketing Procedures for
Appeals Arriving at the
Board of Patent Appeals and Interferences
Notice of revised appeal docketing procedures
Effective June 1, 2002, the Board of Patent Appeals and
Interferences (Board) is adopting new docketing procedures which are
designed to result in notification to the appellant within one month of
receipt of an appealed application at the Board that (1) the appeal has
been received at the Board and docketed, or (2) the appeal is being
returned to the examiner for attention to unresolved matters.
Under procedures long in effect, each application containing an
appeal under 35 U.S.C. 134 is subjected to a brief intake review
(known as "outlining") upon arrival at the Board and a more
in-depth review (known as "final paralegal specialist and
administrator review") at a time immediately preceding assignment to
a panel of administrative patent judges (APJs) for decision. Under
existing procedures, an appeal number is assigned during the
"outlining" review phase. The appeal, however, is not docketed to
an APJ until the conclusion of the "final paralegal specialist and
administrator review" phase. Sometimes the Board finds it necessary
to remand an application under appeal to the examiner, prior to
docketing the appeal to an APJ's docket, to permit the examiner or the
appellant to attend to matters in the application.
It would be more efficient for all concerned (appellant,
examiner and Board) if these reviews were to occur immediately after
arrival of the application under appeal at the Board, so that any
matters requiring further attention by the examiner or the appellant
might be addressed while the necessary records remain readily available
and individual recollections concerning the application are still
fresh. Moreover, reserving the act of assigning an appeal number until
such time as the appeal is ready for decision will result in a more
accurate picture of the number of appeals actually pending before the
Board at any particular time.
To allow such administrative corrections to occur more promptly
and to ensure as much as possible that a case is properly in condition
for deliberation when referred to a panel of administrative patent
judges, the Board adopts the following appeal docketing procedures:
When an application appearing to include an appeal under 35
U.S.C. 134 for decision by the Board is received from the Patents
operation, it will be reviewed for
1) gross formalities (including, but not limited to, matters such as
the presence of a notice of appeal, appellant's brief, examiner's
answer, and evidence of an appeal conference having been held, as in
the present "outlining" and appeal conference review),
2) fine formalities (including, but not limited to, matters such as
unacknowledged Information Disclosure Statements or other papers, and
deficiencies in the brief or answer, as now in "final paralegal
specialist and administrator review"), and,
3) status matters (including, but not limited to, matters such as the
presence of communications from appellant beyond the brief, such as a
reply brief or a request for oral hearing).
If the appeal is ready for docketing (that is, if no return of
the case to the examiner is required per the review) three events will
occur:
1) an appeal number will be assigned,
2) the Board will issue a docketing notice, identifying the relevant
appeal contents (brief, reply brief if any, request for oral hearing if
any, and the filing date of each such item), and
 Top of Notices (251) December 29, 2009 |
US PATENT AND TRADEMARK OFFICE |
1349 CNOG 2127 |
3) the appeal will be assigned to a master docket for subsequent
reassignment to the docket of an individual APJ, or directly to the
docket of an individual APJ.
If the appeal cannot be docketed due to matters requiring
further attention in the Patents operation, the appeal will be
administratively returned to the Patents operation with an order
indicating why the appeal cannot be docketed (essentially those reasons
that exist today for administrative remands) and notification of that
return, in the form of a copy of the order, will be mailed to the
appellant. No appeal number will be assigned until the appeal is ready
for docketing.
The docketing notice or order indicating why the appeal cannot
be docketed will provide the appellant and examiner with notification
that the appeal is:
1) at the Board in condition for referral to a panel, or
2) that the appeal is being returned to the Patents operation to
resolve matters requiring attention prior to decision of the appeal.
Accordingly, the appellant will know to which organization to look for
the next communication in the appealed application.
Within one month of receipt of the application file at the
Board, the Board expects to (1) complete all reviews and issue a
docketing notice, or (2) return the application file to the Patents
operation with an order indicating why the appeal cannot be docketed.
The Board plans to implement these revised docketing procedures
beginning June 1, 2002.
April 15, 2002 BRUCE H. STONER, JR.
Chief Administrative Patent Judge
Board of Patent Appeals and Interferences
[1260 OG 18]