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IMPROVED PATENT APPEAL PROCESS WILL SAVE PATENT APPLICANTS $30 MILLION ANNUALLY

Posted by J Matthew Buchanan at August 21, 2005 11:03 PM

The Department of Commerce’s U.S. Patent and Trademark Office (USPTO) announced today that patent applicants can now request an appeal conference and learn its results before incurring the costs of drafting and filing an appeal brief. This change is expected to save patent applicants at least $30 million annually.

"This simple reform saves applicants a significant amount of money and reflects the mandate of the President's Management Agenda for citizen-centered and results-oriented government," noted Jon Dudas, under secretary of Commerce for Intellectual Property and Director of the USPTO.

Previously, when an applicant wished to appeal a patent examiner’s rejection of his/her patent application to the Board of Patent Appeals and Interferences (BPAI), the applicant was required to file a notice of appeal and an appeal brief before the appeal to the BPAI. Depending on the complexity of the invention, appeal briefs cost between $5,000 and $20,000 to prepare.

Before the appeal goes to the BPAI docket, however, the agency holds an appeal conference with the examiner handling the application and two other experienced examiners. The purpose of the conference is to determine if the application is ready for appeal. Under the new procedures, an appeal brief isn’t filed until the outcome of the conference is known. If the case is not ready for appeal, applicants will no longer incur the costs associated with needlessly preparing and filing the brief.

For more information on appeal brief procedures, go to: http://www.uspto.gov/web/patents/patog/week28/OG/TOC.htm#ref12.

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