USPTO Holds Roundtable on Board of Patent Appeals and Interferences' Ex Parte Appeals Rules

On January 20, 2010, Sharon Barner, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office (USPTO), moderated a public roundtable in an effort to obtain comments on the proposed modifications the Board of Patent Appeals and Interferences (BPAI)'s ex parte appeals rules.

According to a press release on the USPTO website, “The BPAI provides critical services for the patent process at the USPTO and for the patent system generally,” noted Deputy Under Secretary Barner. “This roundtable was an important step to gather valuable insight from the public on these proposed modifications and to work together with stakeholders toward a more efficient appeal process and more timely Board decisions.”

The press release goes on to state "[i]t’s USPTO’s goal to reduce the pendency of ex parte patent appeals. The pendency of decided appeals, as measured from the time an applicant files a notice of appeal until the BPAI renders a decision, is now 29.3 months, up from 27.5 months at the end of FY 2009. One way to move toward this goal is to modify the rules of practice in ex parte patent appeals to streamline and improve the overall appeal process.

Objectives of the proposed modifications to the rules are to provide clarity so that appellants know exactly what the rules require, and so that examiners know what they need to do; to streamline the process so that cases move from notice of appeal to decision in a more efficient and timely manner; to allow appellants and examiners an opportunity to fully respond to each other’s positions; and to ensure the appeal process allows for issues to be crystallized so that the Board receives fully-developed issues to be decided."

The agenda, presentation slides, webcast and participant list for the roundtable can be found here.

Information on the proposed rule changes can be found in the Federal Register, here.