Effective September 13, 2004, the U.S. Patent and Trademark Office (USPTO) consolidated most of the rules affecting appeals and interferences under new section 41 of 37 C.F.R. and also modified aspects of the appeals and interference practice. Fed. Reg. 49960-50020 (Aug. 12, 2004).
The consolidation affected ex parte appeals from examiners, which now fall under 37 C.F.R. §§ 41.30-41.54. Unlike the prior rules, only one copy of an appeal brief is now required. This change is consistent with the USPTO’s move toward an electronic file wrapper. Also under the new rules, a concise statement of the issues is replaced by a listing of the rejections presented for review. Moreover, the requirement that claims must be grouped to be considered as standing or falling together has been eliminated. The grouping requirement was reportedly the cause of many disputes and was not believed to be necessary. Under the new rules, the Board of Patent Appeals and Interferences (the Board) will consider claims under a rejection to be grouped unless separate arguments are presented for the various claims under rejection. Also, under the new rules, the examiner will be permitted to make new grounds of rejection in the examiner’s answer to the appeal brief. The USPTO explained that this change was necessary to allow the examiners to address new arguments without reopening prosecution. The comments accompanying the new rules suggest that allowing examiners to make a new grounds of rejection in an examiner’s answer will reduce an apparent problem where new arguments of the appellant would go up to the Board without the examiner’s comments.
The rule consolidation also affects appeals in inter partes reexamination, which now fall under 37 C.F.R. §§ 41.60-41.81. The new rules for appeals in an inter partes reexamination are similar to the rules for an ex parte appeal, except for allowing a respondent brief and a rebuttal brief. The respondent brief is limited to issues raised in the appellant’s brief and the rebuttal brief may be directed toward issues raised in the respondent brief or the examiner’s answer.
The rules consolidation also affect interferences and government (e.g., U.S. Department of Energy and the National Aeronautics and Space Administration) ownership contests, all referred to as "contested cases" under the new rules. The new rules codify judicial precedents, such as the two way unpatentability test for determining interfering subject matter. The new rules largely keep the prior interference practice intact, but modify their language and arrangement. The categories of motions that may now be filed are labeled as "substantive motions" (including redefining the scope of the count, changing the benefit accorded and judgment (e.g., for invalidity of an opponents claims) in the contested case, "responsive motion" (such as to amend or add a claim, change inventorship or otherwise cure a defect raised) or miscellaneous motions. A substantive motion can be based on a "threshold issue," which includes no interference in fact, a motion for an untimely claim under 35 U.S.C. § 135(b), and a motion for unpatentability for a lack of written description.
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