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USPTO Publishes a Notice of Final Rulemaking to Amend the Rules of Practice Before the Board of Patent Appeals and Interferences

  • 11.30.11
  • Sterne, Kessler, Goldstein & Fox

The USPTO has published a notice of final rulemaking to amend the rules of practice before the Board of Patent Appeals and interferences. You can download the final rulehere.


The final rule does not change any of the rules relating to inter partes reexamination appeals. Nor does the final rule change any of the rules relating to contested cases. 

In brief: The Office amends the rules to:

     Remove several of the briefing requirements for an appeal brief, including

1.      Elimination of the statement of the status of claims,

2.      Elimination of the statement of the status of amendments, and

3.      Elimination of the statement of the grounds of rejection to be reviewed on appeal4.

     Elimination of the requirement that you must file an evidence appendix or a related proceedings appendix (final Bd.R. 41.37),

     Provide for the Board to take jurisdiction over the appeal earlier in the appeal process,

     No longer require examiners to acknowledge receipt of reply briefs,

     Create specified procedures under which an appellant can seek review of an undesignated new ground of rejection in either an examiner's answer or in a Board decision,

      Provide that the Board will presume that the appeal is taken from the rejection of all claims under rejection unless cancelled by an applicant's amendment, and

     Clarify that, for purposes of the examiner's answer, any rejection that relies upon evidence not relied upon in the Office action from which the appeal is taken shall be designated as a new ground of rejection.

The Office also withdraws a previously published final rule that never went into effect.

Under the final rule, the Board takes jurisdiction upon the earlier of the filing of a reply brief or the expiration of the time in which to file a reply brief (final Bd.R. 41.35(a)). Examiners are no longer required to acknowledge receipt of the reply brief (Bd.R. 41.43 [removed]).The final rule is also intended to clarify and simplify petitions practice on appeal. For example, except under limited circumstances, any information disclosure statement or petition filed while the Board possesses jurisdiction over the proceeding will be held in abeyance until the Board's jurisdiction ends (final Bd.R. 41.35(d)).

DATES: Effective Date: This rule is effective on January 23, 2012 except withdrawal of the final rule published June 10, 2008 (73 FR 32938) and delayed indefinitely on December 10, 2008 (73 FR 74972) is effective today, November 22, 2011.

Applicability Date: This rule is applicable to all appeals in which a notice of appeal is filed on or after January 23, 2012.

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