Wednesday, January 18, 2012

New Appeal Rules and New Terminal Disclaimer Form

New Appeal Rules go into effect Jan. 23: The PTO has adopted new rules for proceedings before the BPAI. The new rules apply to appeals with a Notice of Appeal filed on or after Jan. 23, 2012.  Several of the rules relate to Appeal Brief content and actually simplify things for Applicant. The biggest change to the rules relates to new grounds of rejection in an Examiner's answer: what constitutes a new ground, and what happens when a new ground appears. See the two-part summary of the rules at the PharmaPatents blog: Rules Simplifying Ex Parte Appeal Practice and New Guidance on New Rejections on Appeal.

EFS now offers web-based Terminal Disclaimer: The PTO has made a small but very useful improvement to e-filing. Instead of uploading a Terminal Disclaimer in the form of a PDF, you can now fill out a web-based Terminal Disclaimer form. See the PTO announcement here and more details here. The TD is automatically processed to verify that the filer is listed on the power of attorney, and if so the TD is automatically approved. In contrast, filing the old way requires a manual review of the TD by PTO personnel. One caveat: if you're not on the power of attorney, the assignee must sign, in which case you'll probably want to file the old way.


  1. The new BPAI rules are little more than buffing the anchor on the Titantic while it is going down.

    The only interesting thing regards the issue of new grounds of rejection. Everything else is cosmetic.

  2. 1. Most of the discussion of new grounds of rejection just gives the BPAI's skewed summary of the law on new grounds of rejection. The summary doesn't even mention Stepan and Leithem, the two most of important recent cases on the topic.

    The only change in the rules about new grounds is new Bd.R. 41.40, which is relatively narrow in scope and effect.

    2. The biggest change in the rules is the complete elimination of most all formal requirements and brief sections. Briefs will now be much shorter, casual, and inexpensive to write.

    3. In my view, the elimination of all of this red tape will simply make it much easier, and more attractive, to file briefs. I don't see how this will help the backlog.

  3. The NPRM was probably written before both Leithem and Stepan were decided. These things take time. And it's not like those cases aren't the law, regardless of what the PTO says in a NPRM.

    Look at David Boundy's comments to the proposed Board rules that he got stopped by OMB back in 2007. David provides a very nice 5 page treatise on the law of new grounds of rejection. We should all familiarize ourselves with it. Hopefully the APJ's will too.

    Mr. Kappos gave Gene Quinn an interview where he discussed BPAI hiring and initiatives to reduce the backlog.

    Shorter reversals would help. Having idiot APJ's go on for pages as to why a reference is enabling, only to reverse because they agree the reference doesn't show the claimed features, is what is fueling the backlog. Those APJ's should be fired (okay, I'll settle for being sent back to examining, but not some useless QAS or other do-nothing job) and replaced with any outside APJ applicant with a pulse.

  4. "Briefs will now be much shorter, casual, and inexpensive to write."

    What was eliminated should take an experienced attorney about 5 minutes to complete or a paralegal twice as long. It is a blip in terms of what it takes to write a good Appeal Brief.