By Donald Zuhn --
Yesterday, the U.S. Patent and Trademark Office published a notice in the Federal Register (73 Fed. Reg. 70282) clarifying the new appeals rules scheduled to take effect on December 10, 2008. The Patent Office also posted a statement regarding the clarification on its website. As we reported last summer, the USPTO set forth amended rules of practice before the Board of Patent Appeals and Interferences (BPAI) in ex parte appeals that would take effect six months from their June 10, 2008 publication date (see "New Appeals Rules Published").
The Office's clarification involves the format of appeal briefs submitted prior to the December 10 effective date. In particular, the Office has indicated that it will accept appeal briefs that are submitted in the new format prior to the effective date of the new appeals rules. The Office noted that it had discovered that a number of appeal briefs have been submitted in the new format, and that these briefs were being rejected as non-compliant. The Office stated that the rejection of such briefs was unintended, and that it "will not hold an appeal brief as non-compliant solely for following the new format even though it is filed before the effective date." Appellants who have received a notice of non-compliant brief under such circumstances may request withdrawal of the notice.
The Office noted that information regarding the new appeals rules, including a list of Frequently Asked Questions about the new rules and checklists for ensuring that briefs comply with the new rules, can be found on a dedicated webpage the Office has set up for the new appeals rules.
The Office's clarification may be somewhat surprising in view of two other Federal Register notices the Office has published on the new appeals rules. In the first notice (73 Fed. Reg. 32559), published on June 9, 2008, the Office requested that interested members of the public comment on the Office's estimates for any additional burdens imposed on applicants by the new appeals rules. As we noted in July, in addition to publishing the notice for comment only one day before the final version of the new appeals rules were published, the Office curiously neglected to list the June 9 notice on its website -- in contrast to the June 10 notice setting forth the final appeals rules which was posted on the Office's website (see "USPTO Rulemaking Practices Being Called into Question (Again)"). The Office published a second notice (73 Fed. Reg. 58943) on October 8, 2008, inviting public comments on paperwork burdens associated with the new appeals rules (see "Unhappy with the Ex parte Appeal Rule? Read This Now"). The publication date of this notice was significant, since the Office of Management and Budget requires 60 days in which to review comments regarding the paperwork burdens of new rules (it does not appear that the OMB has completed its review of the new appeals rules; see ICR regarding new appeals rules). Interested applicants and patent practitioners will now await the OMB's decision regarding the appeals rules.
For additional information regarding this topic, please see:
• "More on Ex parte Appeal Rule," October 10, 2008
• "Unhappy with the Ex parte Appeal Rule? Read This Now," October 8, 2008
• "Patent Office Posts Comments on New Appeals Rules," September 11, 2008
• "More on USPTO Rulemaking Practices,"July 21, 2008
• "USPTO Rulemaking Practices Being Called into Question (Again)," July 20, 2008
• "New Appeals Rules Published," June 10, 2008
• "Patent Office to Publish New Appeals Rules on Tuesday," June 9, 2008
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