According to the Federal Register, the Chief Judge of the Board of Patent Appeals and Interferences (BPAI) or his designee (collectively “Chief Judge”), will have the sole responsibility for determining whether appeal briefs filed in ex parte reexamination proceeding appeals comply with the applicable regulations, and will complete the determination before the appeal brief is forwarded to the examiner for consideration.  The examiner will no longer review appeal briefs for compliance with the applicable regulations.  The USPTO expects to achieve a reduction in ex parte reexamination proceeding appeal pendency as measured from the filing of a notice of appeal to docketing of the appeal by eliminating duplicate reviews by the examiner and the BPAI.

Read the full notice at http://edocket.access.gpo.gov/2010/pdf/2010-12534.pdf.

This paper will be part of the course materials for the upcoming 5th Annual Advanced Patent Law Institute on January 21-22, 2010 hosted at the USPTO.

“We are pleased to provide cutting edge data and analysis on this important developing area of patent reexamination,” said Robert Greene Sterne, founding director of SKGF, paper co-author, and recognized expert on patent reexaminations.  “Previously unavailable, this data and our analysis confirms what we have known anecdotally: the next big battle ground in reexamination is going to be appeals from the CRU.”

Jon E. Wright, SKGF director, paper co-author and former CAFC clerk observed, “The CAFC is going to be confronting a flood of reexam appeals from the CRU.  The Court is going to have to decide critical issues involving reexams to make the system more timely, balanced and effective.”

Lori A. Gordon, SKGF director, paper co-author, and seasoned reexamination attorney with domain experience in electronics and communications noted, “Our data collection and analysis provides the first ever explanation of what is really happening at the CRU in terms of appeals to the BPAI.  The BPAI is experiencing very significant backlogs in appeals from normal patent examination.  The addition of a significant number of time-critical appeals from the CRU will further test the BPAI’s ability to process reexam appeals with the required ’special dispatch.’”

Paper co-author and SKGF associate Byron L. Pickard added that “Other areas of interest are district court review of reexam rulings under the Administrative Procedure Act and possible mandamus actions.  These areas of reexam law may prove critical as the reexam process matures.”

Download the full paper here: Appeals from the Central Reexamination Unit