USPTO Sets New Rules to Streamline Patent Appeals

June 11, 2008

The U.S. Patent and Trademark Office (USPTO) have set new guidelines for appeals to its Board of Patent Appeals and Interferences.

USPTO director and undersecretary of commerce for intellectual property Jon Dudas said the new rules are expected to take effect six months from its June 10 publication date. It aims to streamline the appeal process and prompt quicker appeal decisions.

In addition, the key changes would also include requiring examiners to detail reasons for rejecting a patent earlier in the appeal process and requiring outlining requirements for appellant's appeal briefs.

Meanwhile, some people have expressed disagreement with the new requirements, saying these create new significant burdens for appellants.

Scott E. Kamholz, an associate at Boston's Foley Hoag said patent appeals would be more expensive because the appeal brief will need to be as extensive as a federal court brief.

"Overall I support this change, but I still have serious reservations about it because it really does increase the burden on applicants and the cost to make an appeal," Kamholz remarked.