Rules for Ex Parte Appeals to be Simplified

In recent years, the USPTO has advanced significant changes to the rules of practice for ex parte appeals to the Board of Patent Appeals & Interferences (BPAI). (previously proposed appeal rules). The past proposal was not exactly greeted with enthusiasm by stakeholders. In response, today’s Federal register includes a new, and much improved, ex parte appeals rule package. (here)

The new proposal, consistent with the spirit of Director Kappos’ administration to date, advances a refreshing change of pace. Previously the Office proposed increased formality and bureaucratic hurdles seemingly geared toward making USPTO appeal practice more burdensome and expensive to Applicants. The new rules, like many of the proposals of the Kappos regime, advance common sense solutions designed to simplify appeal. Yet, one of the proposed revisions could be used to frustrate the statutorily mandated special dispatch to be accorded ex parte patent reexaminations.

One of the proposals, seeks to offer a tolling of the Reply Brief period upon filing of a 1.181 petition. The object of the proposal would permit Applicants to seek supervisory review of any position of an examiner Answer that arguably qualifies as a new rejection, prior to continuing the appeal. This option makes sense for appeals relating to patent applications. On the other hand, left unpoliced, I wonder if this practice will be abused to frustrate the special dispatch accorded to all ex parte patent reexamination. But, more on that later, first a summary of the proposed changes.

The major themes of the proposed changes are outlined below, including the new Reply/petition option:

1) Remove appeal brief requirements such as “Status of Amendments Section,” and “Evidence Appendix” as this information is already available in the electronic file wrapper.

2) The BPAI will assume jurisdiction immediately upon filing a Reply, or passage of the response period.  (i.e., the Examiner will no longer be required to acknowledge the Reply). It is unclear if this jurisdiction will be awarded if the petition option is pursued.

3) Eliminate the Authority of the Board to remand cases to the Examiner

4) Any arguably new rejection that is presented in the Examiner Answer will be easier to challenge.  The filing of a 1.181 petition tolls the period for filing a Reply brief. Thus an Applicant may await decision on the petition before filing the Reply.

5) No longer considered claims inadvertently left out of the appeal as being canceled (Ex. Parte Ghuman)

Other highlights include statistics on the use of the Pre-appeal Conference Program, and the elimination of the requirement to provide a summary of the claimed subject matter for certain means-plus-function claim elements. (e.g., where these features are not in dispute, and not argued as distinguishing).

Now, back to the Reply/petition option as it relates to ex parte patent reexamination.

While there is little incentive for delay in application prosecution once reaching the Examiner Answer phase, that is not always the case for ex parte patent reexamination. For example, prosecution cannot simply be restarted by the filing of an RCE, likewise extensions of time are not available as a matter of right.  So, once reaching the appeal phase, faced with the proposition of losing at the Board, initiation of the proposed petition procedure may be used as a de facto delay tactic. In my experience, the pendency of a 1.181 petitions can be upward of 4-6 months. Since most patent reexamination is now conducted concurrent with litigation, delay of an adverse decision can be very valuable to litigants in certain circumstances. (see the impact of the pilot program for waiving the patent owner statement)

It is hoped that the USPTO will implement some type of control on this petition option (if adopted). For example, the Board can obtain jurisdiction upon issuance of the Answer. Likewise, upon filing of a petition, the Board could assign an ombudsman to follow up on such petitions for at  least the ex parte patent reexaminations. Alternatively, it may be that the Central Reexamination Unit (CRU) is in the best position to track these filings and can implement their own internal control.

Comments to these proposed rules must be submitted by January 14, 2011.

Note: These rules do not apply to interferences or inter partes patent reexamination proceedings.