According to the USPTO's fiscal year statistics, in the 2006 financial year there were 3,349 ex parte patent appeals filed, compared to 15,483 filed in 2009.
As of October 2010, there were 18,436 appeals pending at the BPAI. Of those, 5,308 have been pending for at least 14 months.
In an attempt to reduce this backlog, the USPTO today issued a notice of proposed rulemaking meant to alleviate some of the burdens associated with the appeals process.
The proposed rules would rescind the 2008 Final Rules on ex parte appeals, which were not welcomed by patent practitioners.
Those rules were ultimately held up due to issues with the Office of Management and Budget and thus were never officially implemented.
Comments received during the rulemaking process on the 2008 rules were very critical of the new requirements, emphasising the increased cost burden placed on appellants, particularly with respect to the statement of fact requirements and the imposition of a 30-page limit on briefs.
The Office said today that the newly proposed rules address the following points in particular:
• Rescinding the stayed 2008 Final Rule.
• Eliminating a number of briefing requirements that ask for information that is readily available in the file history (such as statements of the status of claims, status of amendments, grounds of rejection to be reviewed on appeal, the claims appendix, evidence appendix, and related proceedings appendix).
• Providing that only those claim limitations in dispute will need to be identified in the statement of the summary of the claimed subject matter.
• Providing for a simplified examiner's answer that focuses on addressing the applicant's arguments rather than repeating the final rejection.
• Providing that any new evidence relied upon in a rejection set forth in an examiner's answer shall be designated as a new ground of rejection. The proposals were crafted after feedback received earlier this year during a public roundtable on changes to BPAI practice and in response to an Advance Notice of Proposed Rulemaking in December 2009.
Comments on the proposed rules must be submitted by 5:00pm EST on January 14 2011.
