New Ex Parte Appeal Rules
Patent and Trademark
Practice Group Meeting
January 26, 2012
Effective Date of New Rules
• Monday, January 23, 2012
– Notice of Appeal filed Monday or after
• same: Grounds for Appeal
– Any claim rejected twice
– Appeal v. Petition (rejection v. objection)
• same: Timing
– Notice of Appeal: within time period for reply set
forth in the Office Action
– Brief: within 2 months of Notice of Appeal
(extendable for another 5 months)
Appeal Brief
Still Required
No Longer
Required**
Was Never
Required**
*Real party in
interest
Status of claims
Table of contents
*Related appeals
and interferences
Status of
amendments
Table of authorities
Summary of claimed
subject matter
Grounds of
rejections to be
reviewed on appeal
Argument
Evidence appendix
Claims appendix
Related proceedings
appendix
* = can be left out (Board will assume inventor and no related cases)
** = many sections still recommended if helpful to your case
Appeal Brief
•
Rule change: What claims are on appeal?
– appeal taken from all claims unless canceled (old rule: designated claims)
•
Rule change: Scope of “related appeals and interferences”
– (1 new): involve application or patent owned by appellant or assignee;
– (2 same): known to appellant, assignee, or legal representative; AND,
– (3 same): related to, directly affect or affected by, or having a bearing on
Board’s decision)
•
Rule change: Argument section must explicitly identify and explain error by
examiner
– Each heading must include claim number / statutory basis / cited art (e.g.,
“The Smith reference does not anticipate Claim 1 because it does not
teach the use of X”)
– Separate headings for each argument
– Separate headings for claims argued separately or as a group
•
Rule change: Petition the Chief APJ for review of rejection of noncompliant
brief
Appeal Process
• Name change: Board of Patent Appeals and Interferences (BPAI) to
Patent Trial and Appeal Board (PTAB)
• General rule: no new evidence on appeal
– New exception: dictionary citations
• Rule change: Board’s jurisdiction over appeal
– Old: Examiner had to “acknowledge” reply brief, and could
optionally file Examiner’s Response to Reply Brief, before
jurisdiction passed to Board
– New: Jurisdiction passes to Board after Reply Brief filed,
eliminates Examiner’s Response to Reply Brief
Procedure
• Overview
–
–
–
–
–
Appeal Brief
Examiner’s Answer
Reply Brief – within 2 months from Examiner’s Answer
Examiner’s Response to Reply Brief
Oral Hearing – request within 2 months from Examiner’s
Answer
• If Examiner designates a new ground of rejection in
Examiner’s Answer, Applicant may:
– Reopen prosecution by filing Response under 37 CFR
1.111
– Maintain appeal by filing Reply Brief
Procedure – Board’s Options
•
•
•
•
•
Option (1) affirm
Option (2) reverse
– The Examiner may (a) allow the case, or (b) reopen prosecution and enter a new
rejection
– Important distinction: reversal is not allowance, the Examiner (not the Board)
allows the case
Option (3) remand
– Board may note a specific reason for remand:
 For further prosecution where the Board feels that the most pertinent art has
not been cited
 For further consideration of rejection
 To consider amendment or evidence
Option (4) new ground of rejection
– Applicant may (a) request to reopen prosecution before Examiner with new
amendment or new evidence in response, or (b) request rehearing before Board
with just arguments against new ground of rejection
If Dissatisfied with Board Decision:
– Request Rehearing (within 1 month)
– Appeal to the Fed. Cir. (within 2 months)
– File Civil Action (within 2 months)