New Appeal Rules Effective January 23, 2012

This past Monday the USPTO released the final rule package pertaining to the Rules of Practice Before the Board of Patent Appeals & Interferences in Ex Parte Appeals. (here).

This final rule notification stems from the earlier notice of proposed rule making issued last November. The rules are limited to ex parte proceedings only and have no bearing on patent interferences, or inter partes patent reexamination. Likewise, the new rules will not control Inter Partes Review or Post Grant Review. The final rules become effective on January 23, 2012. (for appeals initiated on or after the effective date)

In response to the original publication of the rules, I pointed out that the proposal provides an interesting safeguard against new rejections in an Examiner Answer. Namely, the filing of a 1.181 petition challenging such a rejection tolls the period for filing a Reply brief. Thus an Applicant may await decision on the petition before filing the Reply. This provision will be very helpful in patent application prosecution, but may aggravate ex parte reexamination pendency if abused.

While there is little incentive for delay in application prosecution once reaching the Examiner Answer phase, such 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, if not longer. Since most patent reexamination is now conducted concurrent with litigation, delay of an adverse decision can be very valuable to litigants in certain circumstances.

The PTO addressed this concern in its response to Comment 60 in the Final Rule publication. In the response the PTO acknowledges the potential for abuse in ex parte reexamination proceedings and states that internal controls will be put in place to manage such situations. However, the Office was not willing to commit to a hard deadline for deciding such petitions.

Generally speaking, the Final Rules are largely the same as that originally proposed and are applicant/patentee friendly. Assuming proper implementation and oversight, the new rules are a very positive development.

Interestingly, in responding to a comment pointing out the value of the pre-appeal brief conference (Comment 87), the Office indicated that different “rule making initiative” is currently under consideration for that proceeding. As I pointed out some time ago in a guest post for IPWatchdog, a few slight revisions to this proceeding would be highly beneficial.