US patent office speeds appeals process

The US Patent and Trademark Office is hoping to clear the back-log of pending patents

The US Patent and Trademark Office (USPTO) has unveiled new rules governing patent appeals.

The aim is to speed up patent appeal hearings before the USPTO Board of Patent Appeals and Interferences, and ultimately to accelerate the patent application process and clear the back-log of pending patents.

Under the new rules, requirements for a complete brief are clearly set out, making it easier for applicants to ensure compliance.

Briefing requirements that were not necessary for the appeal, such as the summary of the claimed subject matter, are no longer required.

The facts and arguments required in the brief are focused on distilling the issues of the dispute and establishing where the applicant thinks the examiner was wrong to reject the application.

Furthermore, the rules set out page limits to ensure applicants' arguments are concise.

The new requirements will result in some appeals being resolved before they reach the Board and will help foster timely decisions for the others, according to the USPTO.

USPTO examiners will now have to put their case for rejecting a patent application much earlier in the appeal process.

Examiners will no longer provide a response or supplemental answers to the reply brief, and are no longer allowed to come up with new grounds for rejection in their answers.

"These new rules will benefit the patent community and the USPTO by fostering an ex parte appeals process with improved efficiency and clarity," said Jon Dudas, under secretary of commerce for intellectual property and USPTO director.

"By exchanging information and crystallising the issues of the dispute earlier in the process, the result will be more streamlined appeal process and more efficient decision making."

Patent application has been pursued with vigour in the US, but patent litigation has become a significant source of revenue for many US companies and their lawyers, resulting in a deluge of patent applications.

This has swamped the USPTO and caused a backlog which market analysts predict will damage the US economy. Over 400,000 patents applications were received by the USPTO in 2005 alone.

The new rules are among a number of changes the USPTO has made in the past two years to speed up the patent application process and eliminate bogus applications.