[Federal Register Volume 73, Number 238 (Wednesday, December 10, 2008)]
[Rules and Regulations]
[Page 74972]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-29297]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 41

[Docket No.: PTO-P-2007-0006]
RIN 0651-AC12


Rules of Practice Before the Board of Patent Appeals and 
Interferences in Ex Parte Appeals; Delay of Effective and Applicability 
Dates

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule; delay of effective and applicability dates.

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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 final rule states that the 
effective date is December 10, 2008, and that the final rule shall 
apply to all appeals in which an appeal brief is filed on or after the 
effective date. On June 9, 2008, the Office published a 60-Day Federal 
Register Notice requesting the Office of Management and Budget (OMB) to 
establish a new information collection for BPAI items in the final rule 
and requesting public comment on the burden impact of the final rule 
under the provisions of the Paperwork Reduction Act (PRA). On October 
8, 2008, the Office published a 30-Day Federal Register Notice stating 
that the proposal for the collection of information under the final 
rule was being submitted to OMB and requesting comments on the proposed 
information collection be submitted to OMB. The proposed information 
collection is currently under consideration by OMB. Since the review by 
OMB has not been completed, the Office is hereby notifying the public 
that the effective and applicability date of the final rule is not 
December 10, 2008. The effective and applicability dates will be 
identified in a subsequent notice.

DATES: The effective date for the final rule published at 73 FR 32938, 
June 10, 2008, is delayed, pending completion of OMB review of the 
proposed information collection under the PRA. The Office will issue a 
subsequent notice identifying a revised effective date on which the 
final rule shall apply.

FOR FURTHER INFORMATION CONTACT: Allen MacDonald, Administrative Patent 
Judge, at (571) 272-9797, or Kimberly Jordan, Chief Trial 
Administrator, at (571) 272-4683, Board of Patent Appeals and 
Interferences, directly by phone, or by facsimile to (571) 273-0043, or 
by mail addressed to: Mail Stop Board of Patents Appeals and 
Interferences, 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 that the final rule shall apply to all appeals in which an 
appeal brief is filed on or after the effective date.
    On June 9, 2008, the Office published a new information collection 
request for OMB to review several BPAI items in the BPAI final rule 
2008 as subject to the PRA. See Board of Patent Appeals and 
Interferences Actions; New Collection, Comment Request, 73 FR 32559 
(June 9, 2008) (hereinafter ``60-Day Notice''). In addition to 
requesting OMB to establish a new information collection, the 60-Day 
Notice invited comments from the public and other Federal agencies on 
the burden impact of the proposed information collection under the 
provisions of the PRA. The 60-Day Notice specified that comments were 
to be submitted on or before August 8, 2008.
    On October 8, 2008, the Office published a notice that the proposed 
information collection was being submitted to OMB and public comments 
on the proposed collection were to be submitted to OMB on or before 
November 7, 2008. See Submission for OMB Review; Comment Request; 73 FR 
58943 (October 8, 2008) (hereinafter ``30-Day Notice''). On October 9, 
2008, the Office filed a Supporting Statement with OMB (http://www.reginfo.gov/public/do/PRAViewDocument?ref_nbr=200809-0651-003). 
The Supporting Statement included the Office's response to comments 
received following the 60-Day Notice. The 30-Day Notice requested 
public comments be submitted to OMB on or before November 7, 2008.
    The proposed information collection request is currently under 
consideration for approval by OMB. The review by OMB has not been 
completed. Therefore, the effective and applicability dates of the BPAI 
final rule 2008 will not be December 10, 2008. The Office will notify 
the public when the revised effective and applicability dates are set. 
In the subsequent notification, the Office will provide at least a 30-
day time period before the BPAI final rule 2008 becomes effective.
    On November 20, 2008, the Office published a clarification notice 
on the effective date provision. See Clarification of the Effective 
Date Provision in the Final Rule for Ex Parte Appeals, 73 FR 70282 
(November 20, 2008). As indicated in the clarification notice, 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. Thus, appeal briefs filed before the effective date of the BPAI 
final rule 2008 (yet to be determined) must either comply with current 
37 CFR 41.37 (which remains in effect) or revised 37 CFR 41.37 (the 
effective date of which has yet to be determined). Furthermore, the 
Office has posted a list of questions and answers on the USPTO Web site 
(at http://www.uspto.gov/web/offices/dcom/bpai/rule.html) regarding the 
implementation of the BPAI final rule 2008. These questions and answers 
will be revised accordingly.

    Dated: December 5, 2008.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E8-29297 Filed 12-9-08; 8:45 am]
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