As of January 23, 2012, all Appeals filed at the U.S. Patent and Trademark Office (USPTO) are subject to new rules of practice before the Board of Patent Appeals and Interferences (BPAI). The new rules are generally intended to simplify the Appeal process.
In summary, the new rules (i) remove several briefing requirements for an Appeal Brief, (ii) provide for the BPAI to take jurisdiction earlier in the appeal process, (iii) no longer require Examiners to acknowledge receipt of Reply Briefs, (iv) create specified procedures for review of undesignated new grounds of rejection in an Examiner’s Answer or BPAI decision, (v) provide that the BPAI will presume that the appeal is for all rejected claims unless claims are cancelled, and (vi) clarify that any rejection in the Examiner’s Answer that relies upon new evidence shall be designated as a new ground of rejection.
While the new rules may tend to ease the appeal process for an appellant, particularly in the reduced Appeal Brief requirements, the new rules include a variety of new post-Appeal Brief procedures that appellants should carefully review during the appeals process for both prosecution strategy and patent term adjustment (PTA) reasons.
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