On November 15th, Director Kappos published 21 pages of proposed rulemaking entitled “Rules of Practice Before the [BPAI] in Ex parte Appeals.” 75 Fed. Reg. 69828 (Nov. 15, 2010). (A copy is available at the end of this post.) There is an entire column of “Background” which summarizes the fate of the rule changes first proposed on July 30, 2007, widely criticized, never implemented, currently stayed and now proposed to be rescinded in favor of these new proposed rules. The new rules have two main thrusts: to simply the briefing process and to get the appeal before the Board more quickly (and to keep it there).
To provide some context, I filed an Appeal Brief under the rules then in effect on Oct. 12, 2007, the Examiner filed an answer in January 2009 and I filed a Reply in February 2009. The application was not forwarded to the Board and docketed until January 2010 (!) Most of the delay was apparently caused by the Examiner’s failure to list one piece of art in the “evidence relied upon” section of his Answer. The new rules intend to prevent this sort of delay by transmitting the appeal to the Board after the Reply is received (and the Examiner would not be able to respond to the Reply Brief). The Board has the sole authority to determine non-compliance but would not be able to remand an application to the Examiner without the Director’s approval. There are many other changes, too numerous to “reprint” here, but some stuck in my head after reading most of the notice.
Preparation of the Brief is simplified somewhat by not requiring a statement of the detailed history of the claims on appeal, not requiring that support be given for every claim limitation in the independent claims – only those in dispute — and by omitting the requirement for the “claims appendix” and the “evidence appendix.” The Board is to presume that the appeal is taken from all claims under rejection, even if appellant fails to list them all. The options if the Examiner enters a new ground of rejection are clarified (I think), as well as the required statement of related appeals, interferences and judicial proceedings (I think), and examples of new grounds of rejection are given. The proposed rules make it perfectly clear, however, that substantive prosecution stops after filing the appeal brief (not upon filing the notice of appeal). However, applicants can still send in case law that advances their position. Importantly, the new rules eliminate the “presumption of Examiner correctness” from the rules. For background on this presumption, see 75 Fed. Reg. at 69835.
With the Board currently affirming rejections 65-70% of the time, the new rules, even if they are finalized, may only smooth your prosecution highway to the edge of a cliff, but at least the Director seems well aware that “justice delayed is justice denied.” Now let’s work on the “justice” part a little harder.