July 13, 2005
#05-31
Press Release, 05-31
IMPROVED PATENT APPEAL PROCESS WILL SAVE PATENT APPLICANTS $30 MILLION ANNUALLY
PRESS RELEASE
The Department of Commerce’s U.S. Patent and Trademark
Office (USPTO) announced today that patent applicants can now
request an appeal conference and learn its results before
incurring the costs of drafting and filing an appeal brief.
This change is expected to save patent applicants at least $30
million annually.
"This simple reform saves applicants a significant amount of
money and reflects the mandate of the President's Management
Agenda for citizen-centered and results-oriented government,"
noted Jon Dudas, under secretary of Commerce for Intellectual
Property and Director of the USPTO.
Previously, when an applicant wished to appeal a patent
examiner’s rejection of his/her patent application to the
Board of Patent Appeals and Interferences (BPAI), the applicant
was required to file a notice of appeal and an appeal brief
before the appeal to the BPAI. Depending on the complexity of
the invention, appeal briefs cost between $5,000 and $20,000 to
prepare.
Before the appeal goes to the BPAI docket, however, the agency
holds an appeal conference with the examiner handling the
application and two other experienced examiners. The purpose of
the conference is to determine if the application is ready for
appeal. Under the new procedures, an appeal brief isn’t
filed until the outcome of the conference is known. If the case
is not ready for appeal, applicants will no longer incur the
costs associated with needlessly preparing and filing the
brief.
For more information on appeal brief procedures, go to:
http://www.uspto.gov/web/patents/patog/week28/OG/TOC.htm#ref12
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