M.P.E.P. 1200 Appeal

Question 1

Rules of Conduct Board of Appeals

Answer 1

37 CFR 41

Question 2

What to look for in appeal test questions?

Answer 2

New rejections by the Board,

Requests for remand to the examiner.

Question 3

When must an appeal brief be filed?

Answer 3

Within Two extendable months from the date that the Notice of Appeal is received at the Patent Office.

Automatically extendable up to an additional 5 months.

• *Use Certificate of Mailing or Express Mail
• *Send self addressed card.

Question 4

Brief Must Set Forth the Following or Fix Within 30 days

Answer 4

1. Identification of the real party in interest;
   -Old if you forgot, they send back
   -Now presumed to be inventor.
2. Related appeals and interferences;
   -Presumed that there are none.
3. A summary of claimed subject matter of each independent claim and dependent claim separately argued;
   -Typically independent, but argue each rejection
4. Arguments directed to each and every rejection with separate headings for each;
   -Cite Cases if you have to.
   AND
5. An appendix containing a copy of the claims appealed.
   -Handy to use

Question 5

Can You Amend After Filing Appeal?

Answer 5

Only to:
1. Cancel claims that do not affect other claims,
AND/OR
2. Rewrite dependent claims into independent format.

Question 6

Will Amendments be admitted in an Appeal?

Answer 6

They will not be admitted without a showing of good cause and they must overcome all outstanding rejections,
AND

Must be submitted before filing.

Question 7

Examiner’s Answer: New Rejection

Answer 7

Can re-open prosecution on new rejections and file reply brief.

 - no amendments, affidavits, declarations
 - File a Petition if not labeled as New Rejection

Appeal maintained.

Question 8

Oral Hearing

Answer 8

May be requested within 2 Months after the date the Examiner’s Answer is sent OR waived.

Must pay fee.

Can extend for causes.

Question 9

Reply Brief

Answer 9

Applicant has 2 months following Examiner’s Answer to file a Reply Brief, which is now a matter of right.

Extend for cause.

Question 10

Board Decision

Answer 10

1. Affirm or reverse the Examiner in whole or in part (2 Months), or remand (30 day response).
   AND/OR
2. Issue a statement, which constitutes a new ground of rejection.

Question 11

What if Board issues its own rejection?

Answer 11

1. Applicant may submit an appropriate amendment of the claims so rejected or a showing of facts, or both and have the matter reconsidered by the Examiner (can appeal again);
   OR
2. The applicant may have the new rejection reconsidered by the board.

Question 12

Examiner Affirmed, what is your option and deadline?

Answer 12

Request a rehearing within two months, or Appeal to CAFC (99%) or District Court or Eastern District of Virginia (FRCP).

You can do nothing and have the application to move “without further adjustment”

Question 13

Board issues new ground of rejection, what is your option and deadline?

Answer 13

Submit response and have examiner consider
OR

request rehearing and address new ground of rejection with Examiner.

Question 14

What about affidavits and similar evidence in Appeals?

Answer 14

They are not admitted into the file after the Notice of Appeal is filed without a showing of why they were not earlier presented
AND

They must overcome all outstanding rejections.

Question 15

Post-Appeal

Answer 15

1. A rejection cannot be appealed unless it is a Final Rejection or has been made twice.
2. An oral argument before the Board of Appeals is held only if requested in writing by the applicant and a fee paid.
3. Whenever the Board makes a new ground of rejection, the applicant may either ask that the new ground be reviewed by the Board OR ask that the new ground be reviewed by the Examiner via reopening prosecution.

Question 16

Amendments Before You File Appeal

Answer 16

Handled under Examiner discretion

Rule 1.116

Question 17

What if Board Reverses?

Answer 17

Do nothing, you get Notice of Allowance for everything.

Case is still pending.

Question 18

What headings SHOULD an Appeal Brief include?

Answer 18

1. A list of the real party in interest
2. A listing of related appeals, interferences, and trials
3. A summary of claimed subject matter
5. Claims appendix

Question 19

What headings in the Appeal Brief may be left out if the application is not related to any current PTO filing and is not licensed?

Answer 19

1. Listing of real party in interest (If omitted, PTO will assume inventor is the real party of interest
2. listing of related appeals, interferences, and trials

Question 20

What should appellant do if they want to reopen prosecution and Examiner gives a new ground for rejection but does not designate the new ground of rejection?

Answer 20

Appeal should file a petition under 37 CFR 1.181 to have the rejection designated as a new ground of rejection within 2 months of the mailing date of Examiner’s Answer.

Question 21

What should appellant do if Examiner gives a new ground for rejection but does not designate the new ground of rejection and the appellant wants to argue against the new rejection and?

Answer 21

File a Reply Brief and argue against the new rejection. When an applicant only wants to submit arguments against a new ground of rejection, the most appropriate filing is a Reply Brief including the new arguments.

Question 22

Examiner listed Evidence (an affidavit) that was not admitted into record by the Examiner. Can this Evidence be relied upon?

Answer 22

No–it cannot be relied on unless admitted via petition to the Director under 37 CFR 1.181.

Question 23

Are new arguments after the Examiner’s Answer considered? Why or why not?

Answer 23

Upon filing a Reply Brief, jurisdiction goes to the Board. The Board only considers the record before the Examiner. New arguments after the Examiner’s Answer and not responsive to arguments and issues therein will not be considered.

Question 24

An acceptable Appeal Brief in the USPTO include citations of case law authority to…

Answer 24

U.S. Reports and West (The Board has a preference for United States Reports and West but when not covered any other reporter system is acceptable), the Federal Reporter, the United States Patent Quarterly, the Commissioner’s Decisions, and Case copies provided with the Brief.

The Board rules no longer require citation to a particular reporter system and requires copies only when a case is not found in either US Reports or West.

Question 25

When does the Board take jurisdiction during the Appeals process?

Answer 25

upon filing a Reply Brief or the expiration of the time period for such a filing.

Question 26

A Statement regarding Related Appeals and Interferences should include only those cases stemming from a common priority document and which:

Answer 26

Involve an application or patent owned by the appellant or assignee;
Are known to appellant their legal representative or assignee;
May be related to directly affect or be affected by or have a bearing on the Board’s decision.

Question 27

Examiner gives a new ground of rejection that is not it designated. Appellant then files a petition under 1.181, which is granted. What should appellant do next?

Answer 27

File an amendment within 2 months under Rule 1.111 reopening prosecution. If the appellant does not file an amendment the Appeal is automatically dismissed.

Question 28

Examiner gives a new ground of rejection that is not it designated. Appellant then files a petition under 1.181, which has not yet been decided. What should appellant do next?

Answer 28

File a Reply Brief.

Question 29

If a substitute examiner’s answer is written in response to a remand by the Board and further includes a new ground of rejection, the appellant must do what within two months of the date of the substitute examiner’s answer?

Answer 29

Reopen prosecution by filing an amendment under 37 CFR 1.111; AND/OR Maintain the Appeal by filing a reply brief. If any form of amendment accompanies a Reply Brief it will treated as a request to reopen prosecution.