By
Sarah Fendrick —

The
U.S. Patent and Trademark Office published a notice in the Federal Register last month (74 Fed.
Reg. 67987) in which the Office announced that it is
considering modifications to rules governing the practice before the Board of
Patent Appeals and Interferences (BPAI) in ex parte patent appeals.  The USPTO had previously solicited
public comment in 2007 regarding a proposed rule change for practices before
the BPAI in ex parte patent appeals, and the resulting final rule was to become
effective on December 10, 2008.  Due to a number of factors, the final rule was never implemented (see "Patent Office Announces Delay for New Appeals Rules" and "Patent Office to Publish Notice Delaying New Appeals Rules").

As
a result of the previously submitted comments, the USPTO is considering further
change to the final rule to reduce any additional burden introduced by the
final rule.  During this
consideration period, the USPTO is seeking public comment on potential
modifications to the final rule.  In addition to public comment, the USPTO is conducting a public session
and roundtable on January 20, 2010 from 9:30 a.m. to 12:30 p.m. in connection
with the final rule modification.

Several modifications to
the final rule as published in 73 Fed. Reg. 32937 are being considered.  These modifications include:

(1) Deleting portions
of the rule that require the filing of a petition to the Chief Administrative
Patent Judge seeking extensions of time to file certain papers after an appeal
brief is filed in an ex parte appeal or seeking to exceed a page limit; (2)
deleting portions of the rule that require the filing of a jurisdictional statement,
table of contents, table of authorities, and statement of facts in appeal
briefs, a table of contents, table of authorities, and statement of additional
facts in reply briefs, and a table of contents and table of authorities in
requests for rehearing filed in ex parte appeals; (3) deleting portions of the rule that require an
appellant to specifically identify which arguments
were
previously presented to the Examiner and which arguments are new; (4)
deleting portions of the rule that require specific formatting requirements
and page limits for appeal briefs, reply briefs, and requests for rehearing;
and (5) deleting portions of the rule that require appellants to provide a list
of technical terms and other unusual words for an oral hearing.

Written
comments on potential modifications to the final rule can be submitted to the
USPTO until February 12, 2010.  Comments can be submitted by electronic mail to BPAI.Rules@uspto.gov or by regular mail
addressed to:  Mail Stop Interference, Director of the United States Patent and
Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of "Linda Horner, BPAI Rules.

For additional information regarding this topic, please see:

• "Patent Office Announces Delay for New Appeals Rules," December 10, 2008
• "Patent Office to Publish Notice Delaying New Appeals Rules," December 9, 2008
• "Patent Office Issues Appeals Rules Clarification," November 21, 2008
• "More on Ex parte Appeal Rule," October 10, 2008
• "Unhappy with the Ex parte Appeal Rule?  Read This Now," October 8, 2008
• "Patent Office Posts Comments on New Appeals Rules," September 11, 2008
• "More on USPTO Rulemaking Practices,"July 21, 2008
• "USPTO Rulemaking Practices Being Called into Question (Again)," July 20, 2008
• "New Appeals Rules Published," June 10, 2008
• "Patent Office to Publish New Appeals Rules on Tuesday," June 9, 2008