Wednesday, March 31, 2010

Change in PTO procedure: BPAI, not Examiner, will determine if brief is compliant

PTO Director Kappos announced on his blog (here) a change in PTO procedure: the Board of Patent Appeals and Interferences will now have responsibility for determining whether an Appeal Brief is compliant or non-compliant. Details can found in the Federal Register (here).

The new procedure, which goes into effect March 30, 2010, is a big change from existing procedure, whereby an Appeal Brief went to the Examiner first  Under the new procedure, the Examiner won't see the Appeal Brief until the BPAI has checked it for compliance with 37 C.F.R 41.37. A memo to the Examining Corps (here) which announced this new procedure provides additional information, and indicates that a brief with "only minor informalities that do not affect the BPAI panel's ability to render a decision" will be accepted.

I think this new procedure is great news for all parties. First of all, Examiners can spend more time examining and less time dealing with formalities. But I see a more important ramification. Now that compliance will be determined by a small subset of BPAI personnel rather than a large number of Examiners, we should start to see some consistency in what does and doesn't constitute a compliant Appeal Brief.

I say this because it wasn't the nit-picky requirements that I found maddening. After all, the CFR itself dictates a lot of specifics about what an appeal brief must look like. If it's in the rules, you can expect to be required to get that right. No, what I found maddening was that what worked in one Brief didn't work in another. The Examiners and Legal Instrument Examiners were very inconsistent in applying the rules.

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