USPTO Releases New Rules for Ex Parte Appeals

The United States Patent and Trademark Office (USPTO) has released new rules governing practice before the Board of Patent Appeals and Interferences (Board or BPAI) in ex parte patent appeals. An ex parte patent appeal is an appeal from a final rejection of a claim by a patent examiner.

As noted by the USPTO, the final rule is intended to ensure that the Board has adequate information to decide ex parte appeals on the merits, while not unduly burdening appellants or examiners with unnecessary briefing requirements.

More specifically, the rules for ex parte appeals will:

  • Remove several of the briefing requirements for an appeal brief,
  • Provide for the Board to take jurisdiction over the appeal earlier in the appeal process,
  • No longer require examiners to acknowledge receipt of reply briefs,
  • Create specified procedures under which an appellant can seek review of an undesignated new ground of rejection in either an examiner’s answer or in a Board decision,
  • Provide that the Board will presume that the appeal is taken from the rejection of all claims under rejection unless cancelled by an applicant’s amendment, and
  • Clarify that, for purposes of the examiner’s answer, any rejection that relies upon evidence not relied upon in the Office action from which the appeal is taken shall be designated as a new ground of rejection.

It is important to note that the USPTO has also withdrawn a previously published final rule that never went into effect.

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