USPTO publishes new rules for ex parte appeals before the BPAI
June 10, 2008

In today's Federal Register, the USPTO has posted revised rules of practice for ex parte appeals before the Board of Patent Appeals and Interferences. These are the final version of the rules initially proposed nearly a year ago. The rules were hinted at in a press release issued by the USPTO yesterday, and now we have the full details of the new rules. Among the highlights:

  • Elimination of the requirement to use parallel citations to the USPQ in the appeal brief
  • Elimination of the "status of claims" section in the appeal brief
  • Addition of a "claim support and drawing analysis" section in the appendix of the appeal brief showing where support is found in the original specification for each claim limitation, replacing the "summary of claimed subject matter" section
  • Prohibition on new grounds of rejection in the examiner's answer
  • No examiner's responses to reply briefs
  • Increased page limits
The new rules apply to appeals where the appeal brief is filed on or after December 10, 2008. Read the full notice with all the details here.
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