MPEP Ch. 1200 Flashcards
MPEP Ch. 1200
Appeal
Appealing
Applicant may appeal a second action or final rejection by filing a Notice of Appeal and a fee before or after a response is timely filed.
Appeal Brief timing
Appeal brief must be filed within two extendable months from the date the Notice of Appeal is RECEIVED by the PTO.
Extendable up for an additional 5 months.
Appeal Brief
Must set forth (1) ID os the real party in interest; (2) related appeals and interferences;
(3) a summary of claimed subject matter of each independent claim and depends 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.
If defective, have one month to fix non-compliance.
No new evidence may be relied upon.
Amendments after Filing Appeal
Amendments may only cancel claims or rewrite dependent claims into independent format. Affidavits will not be excepted, unless for good cause, and must be submitted before the filing of the brief.
Examiner’s Answer
After filing the appeal brief, the examiner will answer. Examiner may set forth new grounds of rejection (may file a reply brief or reopen prosecution and respond like an OA).
If new ground is not designated, can, with fee, petition to have it formally designated so that you can reopen prosecution.
Oral Hearing
Oral hearing may be requested within two months after the date the Examiner’s Answer is sent. (fee). Deadline to request oral hearing may be extended ONLY for cause otherwise it is waived.
Reply Brief
Two months, following Examiner’s Answer, to file. Extensions must be for cause.
The Board formally takes jurisdiction following the filing of a Reply Brief, or upon expiration of the period to file, whichever comes first.
Board Decision Outcomes
May affirm or reverse the examiner in whole or in part, or remand for further reconsideration of a rejection, further search, or to consider an amendment.
If remanded, the examiner may submit a supplemental Examiner’s answer, which allows the applicant to reopen prosecution or file a reply brief.
The Board may also issue a statement which constitutes new grounds for rejection. The applicant may have the matter reconsidered by Examiner and then appeal to the board or have the new rejection reconsidered by the Board.
Finally, can state a claim may be allowed in an amended form, which is binding on the Examiner.
After the Board Decision
Applicant has two months to file a request for rehearing.
Applicant may also seek review by the Court of Appeals for the Federal Circuit or the U.S. District Court for the Eastern District of Virginia.
During Appeal
At any time, Applicant can file a continuation and/or withdraw appeal.
Post-Appeal
If no appeal is taken from Board decision, and no claims are allowed, the app becomes abandoned as of the deadline date for an appeal to the Federal Courts. If claims are allowed, the Examiner may cancel the rejected claims and send the application to issue. If claims are allowable, but depend on a rejected claim, the app will stand abandoned.
Bright Line Rules for Appeal
(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 ask that the new ground be reviewed by the board or reopen prosecution and have the Examiner review it.
Time Table
Notice of Appeal - only after Final/two rejections
Appeal Brief - due two months from date of Notice of Appeal
Examiner’s Answer - Can raise new ground of rejection
Reply Brief - May be filed within two months of Examiner’s Answer, extendable for cause only
Request for Oral Hearing - Waived if not filed within two months of Examiner’s Answer
[Transfer Jurisdiction to Board after Reply brief]
Decision of Board - Affirm, reverse and/or issue rejection
Request for Rehearing - two months from Decision of Board
Appeal to Federal Court - two months from decision of board or decision on reconsideration
