[Federal Register Volume 75, Number 100 (Tuesday, May 25, 2010)]
[Notices]
[Pages 29321-29322]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-12534]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2010-0046]


Streamlined Procedure for Appeal Brief Review in Ex Parte 
Reexamination Proceedings

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 in ex parte 
reexamination proceeding appeals 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 ex parte reexamination 
proceeding appeals comply with the applicable regulations, and will 
complete the determination before the appeal brief is forwarded to the 
examiner for consideration. The examiner will no longer review appeal 
briefs for compliance with the applicable regulations. The USPTO 
expects to achieve a reduction in ex parte reexamination proceeding 
appeal pendency as measured from the filing of a notice of appeal to 
docketing of the appeal by eliminating duplicate reviews by the 
examiner 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 in ex parte reexamination 
proceeding appeals.

DATES: Effective Date: The procedures set forth in this notice are 
effective on May 25, 2010.
    Applicability Date: The appeal brief review procedure set forth in 
this notice is applicable to appeal briefs filed in ex parte 
reexamination proceedings on or after May 25, 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 for appeal 
brief review, upon the filing of an appeal brief in ex parte 
reexamination proceeding appeals, 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 Central Reexamination Unit or other 
Technology Center examiner for consideration. The Chief Judge will 
endeavor to complete this determination within one month from the 
filing of the appeal brief. To assist regular ex parte appeal 
appellants in complying with 37 CFR 41.37, the BPAI has previously 
posted checklists for notices of appeal and appeal briefs and a list of 
eight reasons ex parte appeal briefs have been 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 ex parte reexamination 
proceeding to consider the appeal brief, conduct an appeal conference, 
draft an examiner's answer, and decide the entry of amendments, 
evidence, and information

[[Page 29322]]

disclosure statements filed after the final rejection 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) 1002.02(b) and (c).
    Once the Chief Judge accepts the appeal brief as compliant, an 
examiner's answer will be provided in the ex parte reexamination 
proceeding if the examiner determines that the appeal should be 
maintained. 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 ex parte 
reexamination proceeding 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 ex parte reexamination proceeding to the Patent Examining 
Corps for issues related to a noncompliant appeal brief.
    This notice does not apply to inter partes reexamination 
proceedings. The Office is considering a streamlined procedure for 
review of briefs filed in inter partes reexamination proceedings, in 
which the Chief Judge will also have the sole responsibility for 
determining whether briefs filed in inter partes reexamination 
proceedings comply with 37 CFR 41.37, 41.67, 41.68, and 41.71.

    Dated: May 18, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2010-12534 Filed 5-24-10; 8:45 am]
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