[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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