1204 Notice of Appeal
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Section Frequency Chart
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(a) PATENT APPLICANT.— An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal.
(b) PATENT OWNER.— A patent owner in a reexamination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal.
(a) GENERAL FEES. — The Director shall charge the following fees:
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(6) APPEAL FEES. —(A) On filing an appeal from the examiner to the Patent Trial and Appeal Board, $540.
(B) In addition, on filing a brief in support of the appeal, $540, and on requesting an oral hearing in the appeal before the Patent Trial and Appeal Board, $1,080.
An additional fee for forwarding an appeal to the Board after Examiner's Answer is set at 37 CFR 41.20(b)(4).
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(a) Who may appeal and how to file an appeal An appeal is taken to the Board by filing a notice of appeal.
(1) Every applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply.
(2) Every owner of a patent under ex parte reexamination filed under § 1.510 of this title before November 29, 1999, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply.
(3) Every owner of a patent under ex parte reexamination filed under § 1.510 of this title on or after November 29, 1999, any of whose claims has been finally (§ 1.113 of this title) rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply.
(b) The signature requirements of §§ 1.33 and 11.18(a) of this title do not apply to a notice of appeal filed under this section.
(c) An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office. Questions relating to matters not affecting the merits of the invention may be required to be settled before an appeal can be considered.
(d) The time periods set forth in paragraphs (a)(1) through (a)(3) of this section are extendable under the provisions of § 1.136 of this title for patent applications and § 1.550(c) of this title for ex parte reexamination proceedings.
I. APPEAL FEES
Appeal fees, including notice of appeal, petition, and appeal forwarding fees, due under 37 CFR 41.20 cannot be paid using a general authorization to a deposit account.
Effective March 19, 2013, the fee for filing an appeal brief in an application or ex parte reexamination was reduced to $0.
II. APPEAL BY PATENT APPLICANT
An applicant for a patent dissatisfied with the primary examiner’s decision in the second or subsequent rejection of the applicant's claims may appeal to the Board for review of the examiner’s rejection by filing a notice of appeal and the required fee within the set time period.
- 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 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 can choose to file an appeal in the continuing application, even if the claim was rejected only once in the continuing application.
Applicant cannot file an appeal in a continuing application, or after filing a request for continued examination (RCE), until the application is under a rejection.
- Accordingly, applicant cannot file a notice of appeal with an RCE, even if the application has been twice rejected prior to the filing of the RCE.
If appellant files an amendment, a notice of appeal and an appeal brief on the same date after the mailing of a final action, 37 CFR 1.116 applies. Such an amendment filed after a final action is not entered as a matter of right.
If applicant files a reply under 37 CFR 1.111 in response to a second or subsequent non-final rejection and later files a notice of appeal before the Office considers the reply, or the reply is filed on the same day as the notice of appeal, the notice of appeal is defective and the Office will answer the reply in due course.
An applicant is presumed to be appealing all claims under rejection in a particular application unless cancelled by an amendment filed by the applicant and entered by the Office.
- Thus, an appeal is presumed to be taken from the rejection of all pending claims under rejection in the application regardless of whether the notice of appeal identifies fewer or more than all pending claims under rejection.
- If an appellant does not file an amendment cancelling claims that the appellant does not wish to appeal, but then also fails to provide any argument in the appeal brief directed to those claims, any challenge to that ground of rejection has been waived, and the Board has discretion to simply affirm any rejections against such claims.
Although the rules do not require that the notice of appeal be signed, applicants may file notices of appeal which are signed.
The notice of appeal must be filed within the period for reply set in the last Office action, which is normally three months for applications.
The use of a separate letter containing the notice of appeal is strongly recommended.
III. APPEAL BY PATENT OWNER
In an ex parte reexamination filed before November 29, 1999, the patent owner may appeal to the Board after the second rejection of the claims.
In an ex parte reexamination filed on or after November 29, 1999, the patent owner may appeal to the Board only after the final rejection of one or more claims in the particular reexamination proceeding for which appeal is sought.
Failure to file an appeal in an ex parte reexamination proceeding will result in issuance of the reexamination certificate.
1204.01 Reinstatement of Appeal
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When prosecution is reopened after the filing of a notice of appeal and prior to a written decision by the Patent Trial and Appeal Board, appellant must file a new notice of appeal and a complete new appeal brief in order to reinstate the appeal.
- Any previously paid appeal fees for filing a notice of appeal, filing an appeal brief (if any), requesting an oral hearing and/or forwarding the appeal to the Board will not be required to be paid again except if a final Board decision has been made on the first appeal.
If the appeal fees have increased since they were previously paid, then appellant must pay the difference between the current fee(s) and the amount previously paid.
- Appellant must file a complete new appeal brief in compliance with the format and content requirements within two months from the date of filing the new notice of appeal.
- For example, suppose the applicant files a notice of appeal and two months later applicant files an appeal brief.
- During the appeal conference, it is decided to reopen prosecution rather than draft an examiner’s answer.
- If applicant proceeds to file a subsequent appeal by filing a new notice of appeal and appeal brief, applicant would only pay the difference in fees between the current fees and the amount previously paid.
- Similarly, if applicant files an RCE after the notice of appeal and a final Board decision is not issued, the applicant would only pay the difference in fees between the current fees and the amount previously paid.
If the appeal results in a written decision, the Office will again require the submission of the fees if a new appeal is later filed.
- For example, if the Board issues a decision affirming a rejection and the appellant does not seek reconsideration or file an appeal, then the decision on the appeal is final, and any subsequent prosecution resulting in a new appeal would require the payment of all appeal fees.
- Moreover, if applicant elects to reopen prosecution after a decision by the Board, then applicant would have to pay the appeal fees if a new appeal is filed.
If applicant elects to maintain the appeal or request rehearing after a decision, the applicant need not pay additional appeal fees.
- Responding to a requirement for briefing or responding to a remand would not require payment of additional appeal fees.
1204.02 Pre-Appeal Brief Review Request and Conference Pilot Program
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Presenting a request for pre-appeal brief review does not change the fee required to file a notice of appeal and does not require a separate fee.
- No extensions of time to file the request for review later than the notice of appeal are available.
- In order to be proper the applicant must file a notice of appeal.
- The request for pre-appeal brief review must be filed with the filing of the notice of appeal and before the filing of an appeal brief.
- The request must be accompanied by arguments in a separate paper entitled, "Pre-Appeal Brief Request for Review".
- The request may not exceed five (5) total pages and should provide a succinct, concise and focused set of arguments for which the review is being requested.
- Requests are limited to appealable, not petitionable matters.
- A request that fails to comply with these requirements should be dismissed.
A pre-appeal brief request that is found not compliant cannot be corrected and resubmitted to cure the reason(s) for non-compliance because the corrected request would not meet the requirement that the notice of appeal and pre-appeal brief request be filed on the same date.
Upon receipt of a properly filed request, a supervisor will designate a panel of appropriate reviewers to review the appellant's remarks and the examiner's rejections.
- The panel will include at least a supervisor and the examiner of record and will have the authority to reopen prosecution if appropriate.
- The appellant will not be permitted to attend the review and no interviews will be granted prior to issuance of the pre-appeal brief review decision.
After the review is complete, the Office will mail a decision on the status of the application. The decision will state one of the following:
- (A) The application remains under appeal because there is at least one actual issue for appeal.
- (B) Prosecution on the merits is reopened and an appropriate Office communication will follow in due course. In appropriate circumstances, a proposed amendment may accompany the panel’s decision proposing changes that, if accepted, may result in an indication of allowability for the contested claim(s).
- (C) The application is allowed on the existing claims and prosecution remains closed.
- (D) The request fails to comply with the submission requirements and is dismissed.
The panel’s review will be terminated if the applicant files any of the following responses after filing a request, but prior to a decision by the appointed panel of examiners assigned to conduct the review.
- (A) An appeal brief.
- (B) A request for continued examination.
- (C) An after final amendment.
- (D) An affidavit or other evidence.
- (E) An express abandonment.
After a panel decision, the time period for filing an appeal brief will be reset to be one month from the mailing of the decision on the request, or the balance of the two-month time period running from the receipt of the notice of appeal, whichever greater.
- Further, the time period for filing of the appeal brief is extendible under 37 CFR 1.136.
- For as long as this pilot program remains in effect, submission of a pre-appeal review request may extend the period for filing an appeal brief until a decision is made on the request or the request is otherwise dismissed.
1204.03 Interviews After Notice of Appeal
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One interview after final rejection is normally permitted.
- Where a notice of appeal is filed in an application or ex parte reexamination, the phrase "after final rejection" includes only the time from the mailing of the final rejection through the filing of an appeal brief.
No interviews will be granted from the filing of a request for pre-appeal review through issuance of a decision on the request.
Except in unusual situations, no interview is permitted after the appeal brief is filed.
- Where an appeal brief is filed in an application or ex parte reexamination, the phrase "after the appeal brief is filed" includes the time from filing of the appeal brief through the first of a decision by the Board, the mailing by the examiner of a rejection or other paper with a response period, the mailing of a notice of defective appeal brief, or the mailing of a notice of allowance.
1204.04 Official Record on Appeal
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Evidence means something (including testimony, documents and tangible objects) that tends to prove or disprove the existence of an alleged fact, except that for the purpose of this subpart
- Evidence does not include dictionaries, which may be cited before the Board.
Record means the items listed in the content listing of the Image File Wrapper of the official file of the application or reexamination proceeding on appeal or the official file of the Office if other than the Image File Wrapper, excluding amendments, Evidence, and other documents that were not entered.
