PTO Announces New Rules for Ex Parte Appeals


PTO Announces New Rules for Ex parte Appeals


Effective January 23, 2012, the United States Patent and Trademark Office (USPTO) amends the rules governing practice before the Board of Patent Appeals and Interferences (BPAI) in Ex parte patent appeals.  Specifically, the PTO amends the rules to:


1) Remove several of the briefing requirements for appeal briefs.

2) Provide for the Board to take jurisdiction over the appeal earlier in the appeal process.

3) No longer require Examiners to acknowledge receipt of reply briefs.

4) Specify procedures under which an Appellant can seek review of an undesignated new ground of rejection in either an Examiners answer or on a Board decision.

5) Provide that  the Board will presume that the appeal is taken from the rejection of all claims under rejection unless canceled by Amendment, and clarify that, for purposes of the Examiners answer, any rejection that relies upon evidence not relied upon in the Office Action from which the appeal is taken shall be designated as a new ground of rejection. 

6) Withdraw  previously published final rules that never went into effect.


The Federal Register Notice can be found at:

For further information, please contact Stuart S. Levy at