Monday, November 22, 2010

PTO proposes new appeal rules

Last week the PTO released a Notice of Proposed Rulemaking for rules governing ex parte appeals before the BPAI. (Read the official notice here.)

Generally, these rules make the applicant's job easier. The PharmaPatents blog has a nice summary here, so I won't bother with one. I will also tell you my personal favorite among all the changes: Summary of the Claimed Subject Matter. The current rule requires an explanation of each limitation of each claim under appeal. The proposed rule requires only an explanation of "each limitation in dispute by appellant." Less work for me and a reduced file wrapper as compared to the current practice.

I'm also glad to see a detailed explanation – almost three pages – of what constitutes a new ground of rejection in an Examiner's Answer. Five examples of what does constitute a new ground and five examples of what does not. While I don't particularly like the "not a new ground" list, I'm happy to have guidance from the PTO rather leaving this up to the Examiner's interpretation. While this guidance is not part of the text of the rule itself, I would confidently refer to the Federal Register Notice when arguing that the Answer did contain a new ground, if it came to that.

Past History: As you may recall, the PTO suspended the last proposed package of appeals rules. That package was supposed to go into effect December 2008, but ended up suspended after significant comment from patent practitioners. The currently proposed rule package bears little resemblance to the last one –which is a good thing.

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