USPTO implements new rules on patent appeals

13 June 2008

Eileen McDermott, New York

The USPTO has published controversial new rules on filing appeals before the Board of Patent Appeals and Interferences that will change the way patent practitioners craft appeals briefs

The Office published a notice of proposed rulemaking on July 30 2007, which elicited comments from organizations including the American Intellectual Property Law Association (AIPLA) and the Intellectual Property Owners association (IPO), as well as companies such as Microsoft, Eli Lilly and 3M.

Many of the comments were very critical of the new requirements, emphasizing, among other issues, the increased cost burden placed on appellants. In its comment letter, AIPLA said: “Some of the proposals...will have the effect of needlessly increasing the burdens and costs to applicants in pursuing an appeal rather than bringing forth information that is appropriate to facilitate an effective and efficient resolution of issues presented to the Board.”

Two of the most contentious provisions in the new rules, which will take effect on December 10 2008, include the Statement of Fact section and the imposition of a 30-page limit on briefs.

The Statement...

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