[Federal Register Volume 75, Number 158 (Tuesday, August 17, 2010)]
[Notices]
[Pages 50750-50751]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-20340]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No.: PTO-P-2010-0065]


Streamlined Procedure for Appeal Brief Review in Inter Partes 
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 filed in 
inter partes reexamination proceeding appeals to increase the 
efficiency of the appellate process and to reduce the 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 inter partes reexamination proceedings (i.e., appellant's 
briefs, respondent's briefs, and rebuttal briefs) 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 
inter partes reexamination proceeding appeal pendency as measured from 
the filing of a notice of appeal to the BPAI's docketing of the appeal 
by eliminating duplicate reviews by the examiner and the BPAI. The 
USPTO expects further reduction in pendency because the streamlined 
procedure will increase consistency in the determination, and thereby 
reduce the number of notices of noncompliant appeal briefs and non-
substantive returns from the BPAI that require parties to file 
corrected appeal briefs in inter partes reexamination proceeding 
appeals.

DATES: Effective Date: The procedure set forth in this notice is 
effective on August 17, 2010.
    Applicability Date: The procedure set forth in this notice is 
applicable to any appeal brief (regardless of whether it is an 
appellant's brief, a respondent's brief, or a rebuttal brief) that is 
filed in an inter partes reexamination proceeding on or after August 
17, 2010.

FOR FURTHER INFORMATION CONTACT: Merrell Cashion, 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 an inter partes reexamination proceeding 
(i.e., an appellant's brief, a respondent's brief, or a rebuttal 
brief), the Chief Judge will review the appeal brief to determine 
whether the appeal brief complies with 37 CFR 1.943(c) and 37 CFR 
41.67, 41.68, or 41.71 before it is forwarded to the Central 
Reexamination Unit (CRU) 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 parties in complying with 37 CFR 1.943(c), 41.67, 41.68, and 
41.71, the BPAI has provided a checklist 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 1.943(c) and 37 CFR 41.67, 41.68, or 41.71, 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 1.943(c) and 37 CFR 41.67, 41.68, or 41.71, 
and sends appellant, respondent, or rebutting party a notice of 
noncompliant brief requiring a corrected brief, the party 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 1.943(c) 
and 37 CFR 41.67(d), 41.68(c), or 41.71(e). The Chief Judge will also 
have the sole responsibility for determining whether corrected appeal 
briefs comply with 37 CFR 1.943(c) and 37 CFR 41.67, 41.68, or 41.71, 
and will address any inquiries and petitions regarding entry of appeal 
briefs or notices of noncompliant appeal briefs.
    The Chief Judge's responsibility for determining whether appeal 
briefs comply with 37 CFR 1.943(c) and 37 CFR 41.67, 41.68, or 41.71 is 
not considered a transfer of jurisdiction when an appeal brief is 
filed, but rather is only a transfer of the specific responsibility to 
notify appellants under 37 CFR 1.943(c) and 37 CFR 41.67(d) 41.68(c), 
or 41.71(e) of the reasons for non-compliance. The Patent Examining 
Corps retains the jurisdiction over the inter partes reexamination 
proceeding to consider the appeal brief, conduct any conference, draft 
an examiner's answer, and decide the entry and consideration 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.  1002.02(b)-(c).
    Once the Chief Judge accepts the appellant's brief, respondent's 
brief, or rebuttal brief as compliant, an examiner's answer will be 
provided in the inter partes reexamination proceeding if the examiner 
determines that the appeal should be maintained. The format for the 
examiner's answer will be streamlined such that the examiner may 
incorporate by reference

[[Page 50751]]

any of the examiner's positions (e.g., rejections) previously made on 
the record. The examiner will treat all pending claims in the 
proceeding as being on appeal. If the notice of appeal, notice of cross 
appeal, or appeal brief identifies fewer than all of the rejected or 
non-rejected claims as being appealed, the issue will be addressed by 
the BPAI panel. The jurisdiction of the inter partes reexamination 
proceeding will be transferred to the BPAI when a docketing notice is 
entered after the time period for filing the last rebuttal brief (if 
appropriate) expires or the examiner acknowledges the receipt and entry 
of the last rebuttal brief. After taking jurisdiction, the BPAI will 
not return or remand the inter partes reexamination proceeding to the 
Patent Examining Corps for issues related to a noncompliant appeal 
brief.

    Date: July 20, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2010-20340 Filed 8-16-10; 8:45 am]
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