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USPTO Issues Notice of Proposed Rulemaking Regarding Ex Parte Appeals before the Board of Patent Appeals and Interferences

Monday, November 15, 2010

Proposed Changes Aim to Simplify the Process and Reduce the Burden on Appellants and Applicants

Washington, DC – The United States Patent and Trademark Office (USPTO) today issued a Notice of Proposed Rulemaking that proposes changes to the rules governing ex parte patent appeals before the Board of Patent Appeals and Interferences. The notice requests public comment on the proposed changes, which include rescinding the stayed 2008 Final Rule. The proposal comes after careful consideration of comments USPTO received at a public roundtable held in January and in response to an Advance Notice of Proposed Rulemaking in December 2009.

“We hear often from stakeholders that the patent appellate process is too complicated and burdensome,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The goal of this proposed rulemaking is to simplify the appellate process in a way that reduces the burden on appellants and examiners to present an appeal to the Board.”

In particular, the USPTO proposes to amend the rules of practice in ex parte patent appeals to avoid undue burden on appellants or examiners to provide information from the record to the Board, to eliminate any gap in time from the end of briefing to the commencement of the Board’s jurisdiction, to clarify and simplify petitions practice in appeals, and to reduce confusion as to which claims are on appeal.

Some of the proposed changes include:

  • Rescinding the stayed 2008 Final Rule.
  • Eliminating a number of briefing requirements that ask for information that is readily available in the file history (e.g., statements of the status of claims, status of amendments, grounds of rejection to be reviewed on appeal, the claims appendix, evidence appendix, and related proceedings appendix).
  • Providing that only those claim limitations in dispute will need to be identified in the statement of the summary of the claimed subject matter.
  • Providing for a simplified examiner’s answer that focuses on addressing the applicant’s arguments rather than repeating the final rejection.
  • Providing that any new evidence relied upon in a rejection set forth in an examiner’s answer shall be designated as a new ground of rejection.
The USPTO’s Notice of Proposed Rulemaking is available for review and public comment in today’s Federal Register at Written comments should be sent via e-mail to

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