English
BPAI Streamlines Appeal Procedures for Inter Partes Reexamination
In a March Federal Register Notice, the USPTO outlined a new procedure for eliminating redundant appeal processing in patent applications. The redundancy was the result of both the examiner and BPAI performing the same review as to whether or not an Appeal Brief was compliant with the rules. Often times this led to the examiner accepting a non-compliant brief only to have the Board kick it back to applicant months or even years later for a previously overlooked informality. Likewise, some complained of examiners abusing the non-compliance notice as a way to avoid answering appeal briefs. The notice of March outlined a new mechanism by which the Chief Judge would be solely responsible for determining brief compliance prior to Examiner review. At the end of this notice, the USPTO pointed out that ex parte and inter partes patent reexamination appeals were not subject to the new mechanism, but the Office was considering such treatment in the future.
Back on May 26, 2010, the same mechanism was noticed in the Federal Register for ex parte patent reexamination appeals. Yesterday a notice was provided in the Federal Register adding inter partes reexamination to the BPAI review mechanism. These improvements should help avoid some of the more aggravating delays experienced in reexamination appeals to the BPAI. Of course, with a significant, and growing appeal backlog, any impact of this change may be offset by sheer numbers.
Re: ..”with a significant, and growing appeal backlog, any impact of this change may be offset by sheer numbers.”
Did you mean total appeal numbers, or reexamination appeal numbers? Since the reexam statute expressly requires the Board to treat reexam appeals with “special dispatch,” I do not see any valid excuse for the Board taking up or processing any ordinary ex parte application appeals for decisions ahead of any undecided reexamination appeals. [Albiet the long delays for some reexam appeal decisions cast doubt on whether they are obeying the statute?]
Furthermore, the Board should obviously be specifically prioritizing reexamination appeals of patents in litigation ahead of other reexaminations. Is it?
Paul,
Reexams are handled before regular prosecution appeals, however, I am unaware of reexaminations concurrent with litigation being advanced first. Also, most reexaminations, especially inter partes, seem to fall into that category so I am not sure such a practice would have much of an impact in any case.
My point with regard to the backlog was simply that even if this mechanism shaves a few months off of pendency, the BPAI’s growing case load may offset any gains. While the Board is handling reexams with special dispatch, increasing the workload will only make that dispatch less “special” over time. The backlog seems to be growing in all respects, reexamination as well.