Rules Consolidated For Board Of Appeals And Interferences

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