| Reexamination |
Referenced Items (157, 158, 159, 160, 161, 162, 163, 164, 165, 166, 167, 168, 169, 170, 171) |
(161) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2010-0065]
Streamlined Procedure for Appeal Brief Review in
Inter Partes Reexamination Proceedings
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
(571) 272-9797 or by electronic mail at BPAI.Review@uspto.gov.
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://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.
html&log=linklog&to=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
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US PATENT AND TRADEMARK OFFICE |
1457 CNOG 496 |
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) Sec. 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.
July 20, 2010 DAVID J. KAPOS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1360 OG 252]