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USPTO Publishes Notice on Streamlined Procedure for Appeal Brief Review in Inter Partes Reexamination Proceedings

August 17th, 2010

The USPTO has published a notice entitled, “Streamlined Procedure for Appeal Brief Review in Inter Partes Reexamination Proceedings” at http://edocket.access.gpo.gov/2010/pdf/2010-20340.pdf.

Effective Date: The procedure set forth in this notice is effective on August 17, 2010.

Applicability Date: The procedure set forth in this notice is applicable to any appeal brief (regardless of whether it is an appellant’s brief, a respondent’s brief, or a rebuttal brief) that is filed in an inter partes reexamination proceeding on or after August 17, 2010.

Brief Summary:Ā  The Chief Judge of the Board of Patent Appeals and Interferences (BPAI) or his designee (collectively, “Chief Judge”), will have the sole responsibility for determining whether appeal briefs filed in inter partes reexamination proceedings (i.e., appellant’s briefs, respondent’s briefs, and rebuttal briefs) comply with the applicable regulations, and will complete the determination before the appeal brief is forwarded to the examiner for consideration. The examiner will no longer review appeal briefs for compliance with the applicable regulations.

SUPPLEMENTARY INFORMATION: Under the streamlined procedure, upon the filing of an appeal brief in an inter partes reexamination proceeding (i.e., an appellant’s brief, a respondent’s brief, or a rebuttal brief), the Chief Judge will review the appeal brief to determine whether the appeal brief complies with 37 CFR 1.943(c) and 37 CFR 41.67, 41.68, or 41.71 before it is forwarded to the Central Reexamination Unit (CRU) or other Technology Center examiner for consideration. The Chief Judge will endeavor to complete this determination within one month from the filing of the appeal brief. To assist parties in complying with 37 CFR 1.943(c), 41.67, 41.68, and 41.71, the BPAI has provided a checklist for notices of appeal and appeal briefs and a list of eight reasons appeal briefs have been previously held to be noncompliant on the USPTO Web site at: http://www.uspto.gov/ip/boards/bpai/procedures/guidance_noncompliant_briefs.jsp.