Writing on his public blog, USPTO director David Kappos explains a streamlined procedure the USPTO has instituted for review of briefs filed in ex parte appeals in patent applications. Under the procedure, the Chief Judge of the Board of Patent Appeals and Interferences (BPAI) will have the sole responsibility for determining whether appeal briefs comply with the formality requirements governing the content of these briefs. The new procedure eliminates two layers of review. Only the Chief Judge and his staff will conduct a compliance review of appeal briefs at the time they are filed. If a brief is determined not to comply with the applicable regulations, the Chief Judge will promptly send the appellant a notice and provide a time period within which an appellant can file a corrected brief. The Chief Judge also will have the sole responsibility for determining whether corrected briefs comply with the applicable regulations and addressing any inquiries and petitions regarding notices of noncompliant briefs. The USPTO expects this procedure to reduce appeal pendency from the filing of a notice of appeal to the docketing of the appeal. To further reduce the number of noncompliant appeal briefs, the Chief Judge has posted on the USPTO website the “Top Eight Reasons Appeal Briefs are Non-Compliant,” which include:
1. Related appeals and interferences – missing or defective: Appellant must provide “a statement identifying by application, appeal or interference number all other prior and pending appeals, interferences, or judicial proceedings known to appellant, the appellant’s legal representative, or assignee which may be related to, directly affect or be directly affected by or having a bearing on the Board’s decision in the pending appeal.”
2. Status of claims – missing or defective: Appellant must provide “a statement of the status of all claims in the proceeding and an identification of those claims that are being appealed.”
3. Status of amendments – missing or incomplete: Appellant must provide “a statement of the status of any amendment filed subsequent to final rejection” in the brief.
4. Summary of claimed subject matter – missing or incomplete: Appellant must provide “a concise explanation of the subject matter defined in each of the independent claims involved in the appeal, which must refer to the specification by page and line number, and to the drawing, if any, by reference characters.”
5. Claims appendix – missing or incomplete: Appellant must provide “an appendix containing a copy of the claims involved in the appeal.”
6. Evidence filed under 37 CFR 41.33(d)(1) and (d)(2) – untimely filed: “An affidavit or other evidence filed after the date of filing an appeal and prior to the date of filing a brief may be admitted if the examiner determines that the affidavit or other evidence overcomes all rejections under appeal and that a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented has been made.”
7. Evidence appendix – missing: In the brief, appellant must provide “an appendix containing copies of any evidence submitted or of any other evidence entered by the examiner and relied on by appellant in the appeal, along with a statement setting forth where in the record that evidence was entered in the record by the examiner.”
8. Related proceedings appendix – missing: Appellant must provide “an appendix containing copies of decisions rendered by a court or the Board in any proceeding identified pursuant to 37 CFR 41.37(c)(1)(ii).”
Additional details about the USPTO procedure are outlined in the Federal Register .
In addition, the USPTO is seeking public comment on a proposed change that would effectively provide a 12‑month extension to the existing 12-month provisional application period. The change would be implemented through the missing parts practice in nonprovisional applications. The proposal would benefit applicants by giving them additional time to determine if patent protection should be sought, enabling IP holders to defer additional fees and enabling applicants to focus efforts on commercialization during the expanded provisional period, according to Kappos. The proposal would add publications to the body of prior art and remove from the USPTO’s workload nonprovisional applications for which applicants decide not to pursue examination.
“The existing 12-month provisional period may provide too little time for inventors to test the marketplace,” Kappos says. “Giving applicants a 12-month period to reply to a missing parts notice would effectively give applicants more time to evaluate the value and market potential of their inventions.” The USPTO published a request for comments on the proposed change in the Federal Register.
Sources: USPTO Director’s Forum and USPTO Press Releases