| Appeals and Interferences |
Referenced Items (345, 346, 347, 348, 349, 350, 351, 352, 353, 354, 355, 356, 357, 358) |
(347) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2008-0054]
Clarification of the Effective Date Provision in the
Final Rule for Ex Parte Appeals
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: On June 10, 2008, the United States Patent and Trademark Office
(Office) published the final rule that amends the rules governing practice
before the Board of Patent Appeals and Interferences (BPAI) in ex parte
patent appeals. The effective date provision in the final rule states that
the effective date is December 10, 2008, and the final rule shall apply to
all appeals in which an appeal brief is filed on or after the effective
date. The final rule requires, in part, appeal briefs in a new format
relative to the format required prior to the rule revision. The Office is
issuing this notice to clarify that it will not hold an appeal brief as
non-compliant solely for following the new format even though it is filed
before the effective date.
FOR FURTHER INFORMATION CONTACT: Kery A. Fries at (571) 272-7757 or Joni
Y. Chang at (571) 272-7720, Senior Legal Advisors, Office of Patent Legal
Administration, Office of the Deputy Commissioner for Patent Examination
Policy directly by phone, or by facsimile to (571) 273-7757, or by mail
addressed to: Mail Stop Comments-Patents, Commissioner for Patents, P.O.
Box 1450, Alexandria, VA 22313-1450.
SUPPLEMENTARY INFORMATION: On June 10, 2008, the United States Patent and
Trademark Office (Office) published the final rule that amends the rules
governing practice before the Board of Patent Appeals and Interferences
(BPAI) in ex parte patent appeals. See Rules of Practice Before the Board
of Patent Appeals and Interferences in Ex Parte Appeals; Final Rule, 73 FR
32938 (June 10, 2008), 1332 Off. Gaz. Pat. Office 47 (July 1, 2008)
(hereinafter "BPAI final rule 2008"). The BPAI final rule 2008 states that
the effective date is December 10, 2008, and the final rule shall apply to
all appeals in which an appeal brief is filed on or after the effective
date. The BPAI final rule requires, in part, appeal briefs in a new format
relative to the format required prior to the rule revision. The Office has
received appeal briefs in the new format under the final rule before the
effective date. The Office will not hold an appeal brief as non-compliant
solely for following the new format even though it is filed before the
effective date.
Accordingly, appeal briefs filed before December 10, 2008, must either
comply with current 37 CFR 41.37 (in effect before December 10, 2008) or
revised 37 CFR 41.37 (in effect on or after December 10, 2008). Appeal
briefs filed on or after December 10, 2008, must comply with the revised 37
CFR 41.37. A certificate of mailing or transmission in compliance with 37
CFR 1.8 will be applicable to determine whether the appeal brief was filed
prior to the effective date in order to determine which rule applies. For
any appeal brief filed in the new format under revised 37 CFR 41.37, the
Office will provide an examiner's answer in the new format under revised 37
CFR 41.39 if the appeal is maintained.
Similarly, a notice of appeal filed before December 10, 2008, in
compliance with revised 37 CFR 41.31 (in effect on or after December 10,
2008) will be accepted by the Office. Thus a notice of appeal filed before
December 10, 2008, must either comply with current 37 CFR 41.31 (in effect
before December 10, 2008) or revised 37 CFR 41.31 (in effect on or after
December 10, 2008), regardless of the date of filing of the appeal brief.
However, a notice of appeal filed on or after December 10, 2008, must
comply with the revised 37 CFR 41.31 (e.g., the notice of appeal must be
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signed in accordance with 37 CFR 1.33(b)).
The Office has held a few appeal briefs filed in the new format prior to
the publication of this clarification notice non-compliant. Any appellant
who has received a notice of non-compliant appeal brief may request that
the notice of non-compliant appeal brief be withdrawn if the sole reason
for non-compliance is that the appeal brief was presented in the new
format.
November 10, 2008 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1337 OG 44]