[Federal Register Volume 75, Number 60 (Tuesday, March 30, 2010)]
[Notices]
[Pages 15689-15690]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-7034]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No.: PTO-P-2010-0026]


Streamlined Procedure for Appeal Brief Review

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is 
streamlining the procedure for the review of appeal briefs to increase 
the efficiency of the appeal process and reduce pendency of appeals. 
The Chief Judge of the Board of Patent Appeals and Interferences (BPAI) 
or his designee (collectively, ``Chief Judge''), will have the sole 
responsibility for determining whether appeal briefs filed in patent 
applications comply with the applicable regulations, and will complete 
the determination before the appeal brief is forwarded to the examiner 
for consideration. The Patent Appeal Center and the examiner will no 
longer review appeal briefs for compliance with the applicable 
regulations. The USPTO expects to achieve a reduction in appeal 
pendency as measured from the filing of a notice of appeal to docketing 
of the appeal by eliminating duplicate reviews by the examiner, Patent 
Appeal Center, and the BPAI. We are expecting further reduction in 
pendency because the streamlined procedure will increase consistency in 
the determination, and thereby reduce the number of notices of 
noncompliant appeal brief and non-substantive returns from the BPAI 
that require appellants to file corrected appeal briefs.

DATES: Effective Date: The procedure set forth in this notice is 
effective on March 30, 2010.
    Applicability Date: The procedure set forth in this notice is 
applicable to appeal briefs filed in patent applications on or after 
March 30, 2010.

FOR FURTHER INFORMATION CONTACT: Krista Zele, Case Management 
Administrator, Board of Patent Appeals and Interferences, by telephone 
at (571) 272-9797 or by electronic mail at [email protected].

SUPPLEMENTARY INFORMATION: Under the streamlined procedure, upon the 
filing of an appeal brief in a patent application, the Chief Judge will 
review the appeal brief to determine whether the appeal brief complies 
with 37 CFR 41.37 before it is forwarded to the examiner for 
consideration. The Chief Judge will endeavor to complete this

[[Page 15690]]

determination within one month from the filing of the appeal brief. To 
assist appellants in complying with 37 CFR 41.37, the BPAI has posted 
checklists for notices of appeal and appeal briefs and a list of eight 
reasons appeal briefs have been previously held to be noncompliant, on 
the USPTO Web site at http://www.uspto.gov/ip/boards/bpai/procedures/guidance_noncompliant_briefs.jsp. If the appeal brief is determined 
to be compliant with 37 CFR 41.37, the Chief Judge will accept the 
appeal brief and forward it to the examiner for consideration. If the 
Chief Judge determines that the appeal brief is not compliant with 37 
CFR 41.37 and sends appellant a notice of noncompliant brief requiring 
a corrected brief, appellant will be required to file a corrected brief 
within the time period set forth in the notice to avoid the dismissal 
of the appeal. See 37 CFR 41.37(d). The Chief Judge will also have the 
sole responsibility for determining whether corrected briefs comply 
with 37 CFR 41.37, and will address any inquiries and petitions 
regarding notices of noncompliant briefs.
    The Chief Judge's responsibility for determining whether appeal 
briefs comply with 37 CFR 41.37 is not considered a transfer of 
jurisdiction when an appeal brief is filed, but rather is only a 
transfer of the specific responsibility of notifying appellant under 37 
CFR 41.37(d) of the reasons for non-compliance. The Patent Examining 
Corps retains the jurisdiction over the application to consider the 
appeal brief, conduct an appeal conference, draft an examiner's answer, 
and decide the entry of amendments, evidence, and information 
disclosure statements filed after final or after the filing of a notice 
of appeal. Furthermore, petitions concerning the refusal to enter 
amendments and/or evidence remain delegated to the Patent Examining 
Corps as provided in the Manual of Patent Examining Procedure (MPEP) 
Sec. Sec.  1002.02(b) and (c).
    Once the Chief Judge accepts the appeal brief as compliant, an 
examiner's answer will be provided in the application if the examiner 
determines that the appeal should be maintained after an appeal 
conference is conducted. See MPEP Sec. Sec.  1207-1207.02. The examiner 
will treat all pending, rejected claims as being on appeal. If the 
notice of appeal or appeal brief identifies fewer than all of the 
rejected claims as being appealed, the issue will be addressed by the 
BPAI panel. The jurisdiction of the application will be transferred to 
the BPAI when a docketing notice is entered after the time period for 
filing a reply brief expires or the examiner acknowledges the receipt 
and entry of the reply brief. After taking jurisdiction, the BPAI will 
not return or remand the application to the Patent Examining Corps for 
issues related to a noncompliant appeal brief.
    This notice does not apply to reexamination proceedings. The Office 
is considering a streamlined procedure for review of briefs filed in 
reexamination proceedings, in which the Chief Judge will also have the 
sole responsibility for determining whether briefs filed in ex parte 
reexamination proceedings comply with 37 CFR 41.37 and briefs filed in 
inter partes reexamination proceedings comply with 37 CFR 41.67, 41.68, 
and 41.71.

    Dated: March 24, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2010-7034 Filed 3-29-10; 8:45 am]
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