USPTO publishes new rules of practice in ex parte appeals to address backlog

The United States Patent and Trademark Office (USPTO) has amended the rules governing practice before the Board of Patent Appeals and Interferences (Board or BPAI) in ex parte patent appeals.

As summarized in the Federal Register, the new rules, which take effect January 23, 2012, will: (1) remove several of the briefing requirements for an appeal brief; (2) provide for the Board to take jurisdiction over the appeal earlier in the appeal process; (3) no longer require examiners to acknowledge receipt of reply briefs; (4) 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; (5) 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 (6) 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.

Here’s the problem they are trying to fix:  the number of ex parte appeals cases pending has taken a significant jump over the past year, according to USPTO statistics:

Cases pending as of 9/30/10                                                 17,851

Cases filed during FY 2011                                                     13,740

Disposals during FY 2011, total

Decided, total                                                                                 7,551

Affirmed                                                                                           3,612

Affirmed-in-Part                                                     `                   1,045

Reversed                                                                                         2,422

Dismissed/Withdrawn                                                                  243

Remanded                                                                                         229

Cases pending as of 9/30/11                                       24,040