MPEP 1200 - Appeal

Question 1

Notice of Appeal

Answer 1

Appeal Brief must be filed within 2 months from the date the patent office receives the Notice of Appeal.

Notice of Appeal NO longer needs to be signed or provide notice to which claims are being appealed.

Question 2

Appeal Brief Contents

Answer 2

Brief must contain (otherwise 1 month to fix non-compliance):

i. Identification of real party in interest (if changed during appeal must notify within 20 days);
ii. Related appeals and interferences;
iii. Summary of claimed subject matter of each independent claim and dependent claim separately argued;
iv. Arguments directed to each and every objection.
v. Appendix containing a copy of the claims appealed.

Question 3

Timing of Appeal Brief

Answer 3

Appeal Brief must be filed along with a fee within 2 months of the date the Notice of Appeal is received by the PTO, this time period is automatically extendable up to an additional 5 months.

Question 4

Amendments after filing Appeal

Answer 4

Amendments filed on or after the Appeal Brief may only:

i. Cancel claims that do not affect other claims, and/or
ii. Rewrite dependent claims into independent format.

Affidavits will not be admitted without:

i. A showing of good cause;
ii. Must overcome all outstanding rejections; and
iii. Must be submitted before filing the brief.

Question 5

Examiner’s Answer and New Grounds of Rejection

Answer 5

Examiner’s Answer may set forth new grounds for rejection. If so:

i. Applicant may reopen prosecution and respond to the action like any other action; or
ii. Applicant may ask the appeal be maintained and respond to the new rejection by the filing of a reply brief.
iii. REPLY BRIEF CANNOT SUBMIT AMENDMENT OR RULE 1.132 AFFIDAVITS OR DECLARATIONS.

If a new grounds of rejection is present, but not designated as such, the applicant can file a petition (with a fee), asking to designate the rejection formally as a new ground.

NOTE: Applicant will only do this if looking to re-open prosecution, otherwise just file a reply brief.

Question 6

Oral Hearing

Answer 6

Oral Hearing may be requested within two months after the date the Examiner’s Answer is sent, and the usual fee paid.
i. Deadline for asking for an oral argument is extendable only for cause.

Oral Hearing is waived if not requested – the appeal will be decided on the papers.

Question 7

Reply Brief

Answer 7

Applicant has 2 months following Examiner’s Answer to file Reply Brief, which can now be filed as a matter of right.
i. Any extension must be for cause.

The Board takes jurisdiction (whichever is first):

i. Following the filing of the Reply Brief; or
ii. Upon expiration of the period for filing such a submission.

Question 8

Board Decision

Answer 8

Board may:

1. Affirm examiner, remand, or reverse; and/or
2. Issue a statement, which constitutes a new ground of rejection.

Question 9

Board: New Ground of Rejection

Answer 9

Applicant may either:
1. Submit an appropriate amendment of the claims so rejected or a showing of facts, or both and have the matter reconsidered by the Examiner (Should the examiner reject the claims again, the applicant can appeal against to the board); OR

2. The applicant may have the new rejection reconsidered by the Board.

Question 10

Timing Following Decision of the Board

Answer 10

1. Following the decision of the board, applicant has 2 months to file a request for rehearing. Similarly, if the board rejects on new grounds but does not designate so, the applicant can request a rehearing to declare the rejections on new grounds.

NOTE: Extensions of time must be for cause.

2. An applicant may at any time file a continuation (RCE, 1.53(b) or 1.53(d)) during the appeal and expressly abandon the parent (RCE, 53(d)) or continue the appeal (53(b)).
3. Applicant may withdraw the appeal at any time.

NOTE: Doing so results in abandonment if there are no allowable claims.

Question 11

Review of Board Decision

Answer 11

Applicant may seek review in either:

CAFC or US District Court for the Eastern District of VA.

Question 12

Post-Appeal Procedure

Answer 12

1. If no appeal is taken from a decision of the Board, the file is returned to the examiner.
2. If no claims are allowed, the application will become abandoned as of the deadline date for an appeal to the CAFC or District Court.
3. If claims are allowed and the appeal is unsuccessful, or withdrawn, or dismissed for failure to file Appeal Brief, the examiner will cancel the rejected claims and send the application to issue.
4. If no claims are allowed but some are allowable, except for dependency on a rejected claim, the application stands abandoned.