[Federal Register Volume 73, Number 225 (Thursday, November 20, 2008)]
[Rules and Regulations]
[Page 70282]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-27357]



[[Page 70282]]

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 41

[Docket No.: PTO-P-2008-0054]


Clarification of the Effective Date Provision in the Final Rule 
for Ex Parte Appeals

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Interpretation and effective date clarification.

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SUMMARY: On June 10, 2008, the United States Patent and Trademark 
Office (Office) published the final rule that amends the rules 
governing practice before the Board of Patent Appeals and Interferences 
(BPAI) in ex parte patent appeals. The effective date provision in the 
final rule states that the effective date is December 10, 2008, and the 
final rule shall apply to all appeals in which an appeal brief is filed 
on or after the effective date. The final rule requires, in part, 
appeal briefs in a new format relative to the format required prior to 
the rule revision. The Office is issuing this notice to clarify 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.

DATES: This is effective November 20, 2008.

FOR FURTHER INFORMATION CONTACT: Kery A. Fries at (571) 272-7757 or 
Joni Y. Chang at (571) 272-7720, Senior Legal Advisors, Office of 
Patent Legal Administration, Office of the Deputy Commissioner for 
Patent Examination Policy directly by phone, or by facsimile to (571) 
273-7757, or by mail addressed to: Mail Stop Comments-Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: On June 10, 2008, the United States Patent 
and Trademark Office (Office) published the final rule that amends the 
rules governing practice before the Board of Patent Appeals and 
Interferences (BPAI) in ex parte patent appeals. See Rules of Practice 
Before the Board of Patent Appeals and Interferences in Ex Parte 
Appeals; Final Rule, 73 FR 32938 (June 10, 2008), 1332 Off. Gaz. Pat. 
Office 47 (July 1, 2008) (hereinafter ``BPAI final rule 2008''). The 
BPAI final rule 2008 states that the effective date is December 10, 
2008, and the final rule shall apply to all appeals in which an appeal 
brief is filed on or after the effective date. The BPAI final rule 
requires, in part, appeal briefs in a new format relative to the format 
required prior to the rule revision. The Office has received appeal 
briefs in the new format under the final rule before the effective 
date. The Office will not hold an appeal brief as non-compliant solely 
for following the new format even though it is filed before the 
effective date.
    Accordingly, appeal briefs filed before December 10, 2008, must 
either comply with current 37 CFR 41.37 (in effect before December 10, 
2008) or revised 37 CFR 41.37 (in effect on or after December 10, 
2008). Appeal briefs filed on or after December 10, 2008, must comply 
with the revised 37 CFR 41.37. A certificate of mailing or transmission 
in compliance with 37 CFR 1.8 will be applicable to determine whether 
the appeal brief was filed prior to the effective date in order to 
determine which rule applies. For any appeal brief filed in the new 
format under revised 37 CFR 41.37, the Office will provide an 
examiner's answer in the new format under revised 37 CFR 41.39 if the 
appeal is maintained.
    Similarly, a notice of appeal filed before December 10, 2008, in 
compliance with revised 37 CFR 41.31 (in effect on or after December 
10, 2008) will be accepted by the Office. Thus a notice of appeal filed 
before December 10, 2008, must either comply with current 37 CFR 41.31 
(in effect before December 10, 2008) or revised 37 CFR 41.31 (in effect 
on or after December 10, 2008), regardless of the date of filing of the 
appeal brief. However, a notice of appeal filed on or after December 
10, 2008, must comply with the revised 37 CFR 41.31 (e.g., the notice 
of appeal must be signed in accordance with 37 CFR 1.33(b)).
    The Office has held a few appeal briefs filed in the new format 
prior to the publication of this clarification notice non-compliant. 
Any appellant who has received a notice of non-compliant appeal brief 
may request that the notice of non-compliant appeal brief be withdrawn 
if the sole reason for non-compliance is that the appeal brief was 
presented in the new format.

    Dated: November 10, 2008.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E8-27357 Filed 11-19-08; 8:45 am]
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