MPEP 1200 - Appeal

Question 1

How and when do you start the appeal process to the Patent Trial and Appeal Board?

Answer 1

Second Actions or Final Rejections can be appealed to the PTAB by filing a Notice of Appeal and paying the fee, either before or after a response to the Final Rejection is filed. Extensions of time may have to be bought to keep the application alive until the date that the Notice of Appeal is filed.

Question 2

What information must be on the Notice of Appeal?

Answer 2

1. The name of the applicant;
2. The serial number of the patent application;
3. The date of the examiner’s final decision;
4. A brief statement of the grounds of the appeal

Question 3

How much time does an applicant have to file an Appeal Brief after the Notice of Appeal is received by the Patent Office?

Answer 3

An Appeal Brief must be filed within two extendable months from the date that the Notice of Appeal is received at the Patent Office. This time period is automatically extendable up to an additional 5 months. MPEP 1204 and 1205

Question 4

What must be in the appeal brief that is filed?

Answer 4

MPEP 1205 Appeal Brief
The brief must set forth the following (and if it is defective, the applicant has one month (30 days) to fix non-compliance):
1. Identification of the real party in interest;
2. Related appeals and interferences;
3. A summary of claimed subject matter of each independent claim and dependent claim separately argued;
4. Arguments directed to each and every rejection with separate headings for each; and
5. An appendix containing a copy of the claims appealed.

Question 5

When can an Oral Hearing be requested?

Answer 5

An oral hearing may be requested in writing accompanied with a fee within two months after the date the Examiner’s answer is sent. The deadline for asking for an oral hearing is extendable only for cause (37 CFR 1.136(b)). If an oral hearing is not requested timely, it is waived, and the appeal will be decided upon the papers submitted.

Question 6

How much time does the applicant have to file a Reply Brief after the Examiner’s Answer?

Answer 6

MPEP 1208
The applicant has two months following the Examiner’s Answer to tile a Reply Brief (only extendable for cause (37 CFR 1.136(b)). The PTAB charges a “brief forwarding fee” whether or not a Reply Brief has been filed.

Question 7

What does it mean when the PTAB “affirms”?

Answer 7

Affirmed - the judgment of the patent examiner is correct and should stand. Affirmed in part - a portion of the judgment of the patent examiner was affirmed.

Question 8

What does it mean when the PTAB “reverses”?

Answer 8

Reversal can occur when the decision of a PTAB is that the judgment of an Examiner was incorrect. The result of reversal is that the Examiner which examined the case is instructed to vacate the original judgment and reexamine the case.

Question 9

What does “remand” mean?

Answer 9

The word ‘remand” means to “return the case.” So, when a court “remands” a case, it means they are returning it to whichever court is designated (Patent Examiner).

Question 10

What can the applicant do when the PTAB makes a new ground of rejection?

Answer 10

Whenever the Board makes a new ground of rejection, the applicant may either ask that the new ground be reviewed (or so designated as a “new ground”) by the Board or ask that the new ground be reviewed by the Examiner via reopening prosecution.

Question 11

Can the applicant withdraw the Appeal?

Answer 11

MPEP 1215 Withdrawal or Dismissal of Appeal
The applicant may at any time withdraw the appeal, but unless there are claims already allowed, such withdrawal results in abandonment of the application.

Question 12

What can the applicant do if he/she is dissatisfied with the decision of the PTAB?

Answer 12

MPEP 1216 Judicial Review
An applicant dissatisfied with the decision of the Board may seek review by the Court of Appeal for the Federal Circuit (CAFC; this court will not hear new evidence) or the US District Court for the Eastern District of Virginia (EDVA; this court will hear new evidence).

Question 13

After the appeal process with the PTAB and the applicant is not happy with the outcome and wants to take to a higher court, how long to file with the CAFC or EDVA?

Answer 13

2 months

Question 14

After the appeal process with the PTAB and the applicant is not happy with the outcome and wants to file a request for a rehearing or reconsideration with the PTAB, how long does the applicant have?

Answer 14

2 months

Question 15

On February 1, 2015, applicant received an Final Rejection Office Action. The examiner gave the applicant six months to respond to the Final Office Action. On April 1, 2015, the applicant submitted a notice of appeal to the PTAB. When is the appeal brief due?

Answer 15

Two months from the date the office receives the Notice of Appeal.

Question 16

A patent application has five claims which are now before the PTAB. Two claims were allowed by the examiner while the three remaining claims were finally rejected. The rejection was appealed to the PTAB. The Board makes a decision and includes new grounds of rejection of the three claims on appeal. What can the applicant do?

Answer 16

1. Submit a showing of facts and have the matter reconsidered by the examiner.
2. Request reconsideration by the Board.
3. Accept the decision of the Board and file an amendment cancelling the rejected claims.
4. Amend only the claims rejected on the new grounds.

Question 17

What is the timing of the Appeal Brief to file?

Answer 17

The Appeal Brief must be filed within 2 months after the Notice of Appeal is received at the USPTO. Time is automatically extendable up to 5 additional months with fee.

Question 18

What can an applicant do when the Examiner’s Answer contains new grounds of rejection?

Answer 18

The applicant can
1. Petition and Reopen Prosecution: Petition under 37 CFR § 1.181 - Petition to the Director and 37 CFR § 41.3 - Petitions (petitions on matters pending before the Board) to have them designated as new grounds and reopen prosecution; or
2. Continue appeals process / Request the Board for reconsideration: Argue in the Reply Brief to the PTAB with points and requesting reconsideration.

Question 19

What are the main legal reporters used when citing cases?

Answer 19

US Patents Quarterly and West National Reporter System

Question 20

Can an amendment be filed in patent prosecution after filing a notice of appeal?

Answer 20

An amendment can be filed that cancels claims that do not affect other claims; also, dependent claims can be rewritten into independent format.

Question 21

Can affidavits be entered into the record after the filing of a notice of appeal.

Answer 21

Affidavits cannot be entered unless there is a showing of good cause.

Question 22

What can the applicant do if the Examiner’s Answer has unlabeled new ground of rejection?

Answer 22

The applicant can file a petition to have it labeled, then proceed with the Reply Brief.

Question 23

What is the timing of the Reply Brief after the Examiner’s Answer?

Answer 23

The Reply Brief can be submitted up to 2 months AS A MATTER OF RIGHT after the Examiner’s Answer. Any extensions must be for cause.

Question 24

What is a real party in interest?

Answer 24

An Assignee; or an exclusive or non-exclusive licensee.

Question 25

What happens to the appeal when an RCE is filed?

Answer 25

MPEP 1215.01: The filing of an RCE will be treated as a withdrawal of the appeal by the applicant, regardless of whether the RCE includes the appropriate fee or a submission. Therefore, when an RCE is filed without the appropriate fee or a submission in an application that has no allowed claims, the application will be considered abandoned.

Question 26

An Appeal was filed for claims 1-12. A month later an RCE without a fee was filed. Claims 1-10 are allowable. Claim 11 is independent and is not allowable. Claim 12 is objected to as being allowable and depends from claim 11. What happens to the claims when the RCE is filed but is missing the fee?

Answer 26

Because the RCE was filed, the Appeal is withdrawn. Claims 1-10 will be allowed. Claims 11-12 will be cancelled. Therefore, the issued patent will only contain claims 1-10.

Explanation: “[u]pon the withdrawal of an appeal, … Claims which are allowable except for their dependency from rejected claims will be treated as if they were rejected. MPEP 1215.01.
Thus, the filing of the RCE without the fee results in the withdrawal of the appeal in this application. However, since the RCE request lacks the submission required by 37 CFR 1.114, the proceedings as to the rejected claims are considered terminated, and the application will be passed to issue only on allowed claims.

Question 27

After Applicant appeals to the PTAB, the Board rejects all the claims in a patent application and adds new grounds of rejection. Applicant decides to reopen prosecution in relation to the new grounds of rejection. He amends some of the claims and requests rehearing for some of the other claims. What will happen next?

Answer 27

Prosecution before the examiner will be reopened. The board will only conduct the rehearing once prosecution on the amendments has concluded. MPEP 1214

Question 28

When the Board designates a new ground of rejection, what are the appellant’s (applicant’s) options?

Answer 28

MPEP 1214.01 Procedure Following New Ground of Rejection by Board
When the Board designates a new ground of rejection under 37 CFR 41.50(b), the appellant, as to each claim so rejected, has the option of:

(A) reopening prosecution before the examiner by submitting an appropriate amendment and/or new evidence (37 CFR 41.50(b)(1));
(B) requesting rehearing before the Board (37 CFR 41.50(b)(2)); or
(C) filing a request for continued examination in which case the decision by the Board is the law of the case. See MPEP § 706.07(h), subsection XI.

Question 29

If an appeal brief is submitted without anyone listed as the owner/real party in interest. What should the Board do?

Answer 29

The board will assume the inventors are the assignees if there is no real party of interest listed. If an appeal brief does not contain a statement of the real party in interest, the Office may assume that the named inventor or inventors are the real party in interest. 37 CFR 41.37(c)(1)(i) and MPEP 1204 Notice of Appeal

Question 30

An examiners answer contains a new ground of rejection. If an amendment or new evidence is needed to overcome the new ground of rejection, what is the best course of action the appellant should take in accordance with the USPTO rules and the procedures set forth in the MPEP?

Answer 30

If the new ground of rejection is not properly labelled as such, file a petition pursuant to 37 CFR 1.181. Then, reopen prosecution by filing a reply brief with the new evidence and amendments.

Question 31

Claims 1-10 were twice rejected, but not in a final action. Can the applicant appeal?

Answer 31

MPEP 1205, under the heading “Appeal By Patent Applicant,” states that “[a] notice of appeal may be filed after any of the claims has been twice rejected, regardless of whether the claim(s) has/have been finally rejected. The limitation of ˜twice or finally…rejected does not have to be related to a particular application. For example, if any claim was rejected in a parent application, and the claim is again rejected in a continuing application, then applicant will be entitled to file an appeal in the continuing application, even if the claim was rejected only once in the continuing application.”

Question 32

Can the Primary Examiner participate in an oral hearing?

Answer 32

Yes.
See MPEP 1209, under the heading “Participation by Examiner”. In those appeals in which an oral hearing has been confirmed by the appellant and the primary examiner has indicated a desire to participate in the oral argument, oral argument will generally only be held if the appellant actually appears for oral argument. If the appellant fails to make an appearance for oral argument, the hearing typically will be waived, and the primary examiner will not be given an opportunity to participate unless the panel hearing the case deems that a presentation by the primary examiner would be useful.

Question 33

In accordance with USPTO rules and the procedures set forth in the MPEP, an amendment filed with or after a notice of appeal under 37 CFR 1.191(a), but before jurisdiction has passed to the Board of Patent Appeals and Interferences, should be entered by the primary examiner where the amendment:

Answer 33

removes issues from appeal.
See 37 CFR 1.116; MPEP 1207, first paragraph

Question 34

If an applicant wishes to withdraw an application from appeal and to reopen prosecution of the application what should they do?

Answer 34

MPEP 1215.01 – Prior to a decision by the Board, if an applicant wishes to withdraw an application from appeal and to reopen prosecution of the application, applicant can file a request for continued examination (RCE) under 37 CFR 1.114, accompanied by a submission (i.e., a reply responsive within the meaning of 37 CFR 1.111 to the last outstanding Office action) and the RCE fee set forth under 37 CFR 1.17(e).

Question 35

When can a practitioner bring a new argument to an oral argument during an appeal when it is not specified in his appeal brief?

Answer 35

MPEP 1209: At the oral hearing, appellant may only rely on evidence that has been previously entered and considered by the primary examiner and present arguments that have been relied upon in the brief or reply brief. Upon a showing of good cause, appellant and/or the primary examiner may rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court. See also 37 CFR 41.47(e)(2).

Question 36

Does a Notice of Appeal need to be signed?

Answer 36

NO.
a Notice of Appeal does not need to be signed. 37 C.F.R. 41.31 Appeal to Board: The signature requirement of 1.33 of this title does not apply to a notice of appeal filed under this section. See also MPEP 1204.II:
Although the rules do not require that the notice of appeal be signed, applicants may file notices of appeal which are signed. It should be noted that the elimination of the requirement to sign a notice of appeal does not affect the requirements for other papers (such as an amendment under 37 CFR 1.116) submitted with the notice, or for other actions contained within the notice, e.g., an authorization to charge fees to a deposit account or to a credit card, to be signed. See MPEP 509. Thus, failure to sign the notice of appeal may have unintended adverse consequences; for example, if an unsigned notice of appeal contains an (unsigned) authorization to charge the notice of appeal fee to a deposit account, the notice of appeal will be unacceptable because the notice of appeal fee is lacking.