USPTO Issues Clarification Regarding New BPAI Rules

The USPTO has issued a clarification on a final rule that amends the rules governing practice before the Board of Patent Appeals and Interferences (BPAI), which is to take effect on December 10, 2008. The final rule shall apply to all appeals in which an appeal brief is filed on or after this effective date. However, the Office will also accept appeal briefs in the new format before the December 10 effective date.

The Office recently discovered that several appeal briefs that had been filed in the new format have been held to be non-compliant because they were filed prior to the effective date of the new rule. This was not the intent of the rule and the Office seeks to clarify that it will not hold an appeal brief as non-compliant solely for following the new format even though it is filed before the effective date. Any appellant who has received a notice of non-compliant appeal brief may request that the notice of non-compliant appeal brief be withdrawn if the sole reason for non-compliance is that the appeal brief was presented in the new format.

Link to final rule amending the rules governing practice before the BPAI (June 10, 2008): http://www.uspto.gov/web/offices/com/sol/notices/73fr32938.pdf

Link to Federal Register notice clarification on final rule (November 20, 2008): http://edocket.access.gpo.gov/2008/pdf/E8-27357.pdf

The Office has also created a list of Frequently Asked Questions (FAQs) about the new BPAI rules, as well as checklists to ensure appeal briefs and reply briefs are following the new format. These documents can be found at: http://www.uspto.gov/web/offices/dcom/bpai/rule.html