New PTO Board of Appeals Rules Seek to Lessen Procedural Burden on Appellants and Examiners

A simpler procedure, earlier jurisdiction and increased clarity are defining traits of new PTO rules for ex parte appeals to the Board of Appeals that go into effect Jan. 23. The PTO issued the new rules last month while withdrawing the previously published 2008 rules that never actually went into effect. 

“The primary goal of these new rules is to lessen the procedural burden on Appellants and Examiners,” says Kenneth E. Horton, a shareholder with the law firm Kirton & McConkie PC (Salt Lake City) and a former patent examiner with the USPTO. “The PTO hopes these changes will reduce the number of non-compliant Appeal Briefs and Examiner’s Answers, shortening the much-too-long appeal process.” 

Due to the great length and detail of the new rules, Horton advises careful study of the rules before pursing an appeal.  For example, numerous elements of the rules apply to simplifying procedures, such as:

• Eliminating statements about the status of claims and amendments, and the grounds of rejection on appeal;
• Eliminating the evidence appendix and related proceedings appendix from the Appeal Brief; and
• Eliminating an Examiner’s response to a Reply Brief. 

Horton added that the PTO will soon amend the MPEP to provide guidance as to what constitutes a “new ground of rejection” during the appeal and the procedures for petitioning the PTO’s failure to designate a new ground of rejection. 

Horton is available to write about key elements of the new Board of Appeals rules, as well as best approaches for pursing an appeal under these new guidelines.  [12/14/2011]