[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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