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1205    Appeal Brief

MPEP SECTION SUMMARY This section discusses the appeal briefs in detail including the time for filing an appeal brief, appeal brief content, and non-compliant appeal briefs and amended briefs.

  Section Frequency Chart

 

MPEP SECTION SUMMARY The appellant has 2 months from the date of the notice of appeal to file an appeal brief and the appeal brief fee. This section discusses further details on the time for filing an appeal brief including an example and extension possibilities.

  Section Frequency Chart

Appellant has 2 months from the date of the notice of appeal to file an appeal brief and the appeal brief fee.

• The usual period of time in which appellant must file his or her brief is 2 months from the date of appeal.
• The Office date of receipt of the notice of appeal (and not the date indicated on any Certificate of Mailing) is the date from which this 2-month time period is measured.

Any brief in an application or an ex parte reeexamination proceeding filed on or after March 19, 2013 need not be accompanied by an appeal brief fee.

• The fee amount on or after that date is set at $0.

If the notice of appeal is filed using the Priority Mail Express® service of the United States Postal Service (USPS), the date of deposit with the USPS is the date from which this 2-month time period is measured because the date of deposit shown by the “date in” on the Priority Mail Express® label or other official USPS notation is considered to be the date of receipt.

The brief may not be filed within the time allowed for reply to the action from which the appeal was taken even if such time is later.

• Once appellant timely files a notice of appeal, the time period for reply set forth in the last Office action is tolled and is no longer relevant for the time period for filing an appeal brief.

This 2-month time period for a patent application may be extended under 37 CFR 1.136(a), and if 37 CFR 1.136(a) is not available, under 37 CFR 1.136(b) for extraordinary circumstances.

• In an ex parte reexamination proceeding, the time period can be extended only under the provisions of 37 CFR 1.550(c).
• The appellant may file a petition for extension of time under 37 CFR 1.136(a) with the appropriate fee. Additional time in excess of 5 months will not be granted unless extraordinary circumstances are involved under 37 CFR 1.136(b).
• The time extended is added to the calendar day of the original period, as opposed to being added to the day it would have been due when said last day is a Saturday, Sunday, or Federal holiday.

Where a proper petition for extension of time to file an appeal brief is filed, the new due date is computed from the receipt date of the notice of appeal, as opposed to the original due date.

FAILURE TO TIMELY FILE AN APPEAL BRIEF

Although failure to file the brief within the permissible time will result in dismissal of the appeal, if any claims stand allowed the application does not become abandoned by the dismissal, but is returned to the examiner for action on the allowed claims.

• If there are no allowed claims, the application is abandoned as of the date the brief was due.
• Claims which have been objected to as dependent from a rejected claim do not stand allowed.

If the time for filing a brief has passed and the application has consequently become abandoned, the applicant may petition to revive the application, as in other cases of abandonment.

If the appeal is dismissed, but the application is not abandoned because there is at least one allowed claim, the applicant may file a petition to reinstate the claims and the appeal, but a showing equivalent to that in a petition to revive is required.

In addition to the petition and petition fee, appellant must file:

MPEP SECTION SUMMARY The arguments in an appeal brief must be responsive to every ground of rejection stated by the Examiner along with explanation of why the examiner erred in the ground of rejection. This section further covers the content required in an appeal brief. The specific items required include the real party of interest, related appeals, interferences, and trials, a summary of claimed subject matter, an argument, and a claims appendix. Each of these required items is discussed in detail.

  Section Frequency Chart

Appellant must file a brief within two months from the date of filing the notice of appeal.

• A brief that is filed on or after January 23, 2012 that fails to comply with the requirements shall be held to be non-compliant.

The arguments in an appeal brief must be responsive to every ground of rejection stated by the Examiner along with explanation of why the examiner erred in the ground of rejection

The specific items required are:

(i) Real party in interest.

A statement identifying by name the real party in interest at the time the appeal brief is filed, except that such statement is not required if the named inventor or inventors are themselves the real party in interest.

• 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.

(ii) Related appeals, interferences, and trials.

A statement identifying by application, patent, appeal, interference, or trial number all other prior and pending appeals, interferences, trials before the Board, or judicial proceedings (collectively, "related cases") which satisfy all of the following conditions: Involve an application or patent owned by the appellant or assignee; are known to appellant, the appellant’s legal representative, or assignee; and may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal.

• If there are no such related cases, the appellant is not required to include the statement, and if the appellant has not included the statement, then the Office may assume that there are no such related cases.
• The rule does not require Appellant to provide copies of decisions in related cases.

(iii) Summary of claimed subject matter.

A concise explanation of the subject matter defined in each of the rejected independent claims, which shall refer to the specification in the Record by page and line number or by paragraph number, and to the drawing, if any, by reference characters.

(iv) Argument.

The arguments of appellant with respect to each ground of rejection and the basis therefor, including citations of statutes, regulations, authorities and parts of the Record relied on, should be presented in this section.

• The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant.
• A statement which merely points out what a claim recites will not be considered an argument for patentability of the claim.

Each ground of rejection must be argued under a separate heading, which clearly identifies the ground of rejection being contested.

• For each ground of rejection applying to two or more claims, the claims may be argued separately (claims are considered by appellants as separately patentable), as a group (all claims subject to the ground of rejection stand or fall together), or as a subgroup (a subset of the claims subject to the ground of rejection stand or fall together).
• When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group of claims and may decide the appeal as to the ground of rejection with respect to the group or subgroup of claims as to the ground of rejection on the basis of the selected claim alone.
• The failure of appellant to separately argue claims which appellant has grouped together constitutes a waiver of any argument that the Board must consider the patentability of any grouped claim separately.
• Under each heading identifying the ground of rejection being contested, any claim(s) argued separately or as a subgroup shall be placed under a separate subheading that identifies the claim(s) by number.

(v) Claims appendix.

An appendix containing a copy of the claims involved in the appeal.

• The copy of the claims should be a clean copy and should not include any markings such as brackets or underlining except for claims in a reissue application and a reexamination proceeding.
• The copy of the claims should be double-spaced and the appendix should start on a new page.

An appeal brief is considered compliant as long as it includes items (i) to (v) in the order set forth therein and does not include prohibited material.

A brief of any new or non-admitted amendment, affidavit or other evidence is prohibited.

• If an appellant wishes to seek review of an examiner’s refusal to admit an amendment, affidavit or evidence, such review is by petition to the Director under 37 CFR 1.181.
• The time for filing this petition is based on the date the examiner refused to enter the amendment, affidavit or evidence and not the date the brief is filed.

An example of a format and content for an appeal brief for a patent application is a brief containing the following items, with each item starting on a separate page:

• Identification page setting forth the applicant’s name(s), the application number, the filing date of the application, the title of the invention, the name of the examiner, the art unit of the examiner and the title of the paper (i.e., Appeal Brief);
• Table of Contents page(s);
• Real party in interest page(s);
• Related appeals, interferences, and trials page(s);
• Summary of claimed subject matter page(s);
• Argument page(s);
• Claims appendix page(s);
  
  

MPEP SECTION SUMMARY This section covers how non-compliant appeal briefs and amended briefs will be handled by the Office and what an appellant can do if they disagree with the holding of noncompliance. The Patent Appeal Center has the responsibility for determining whether appeal briefs filed in patent applications comply, and will complete the determination before the appeal brief is forwarded to the examiner for consideration.

If the appeal brief is determined to be compliant with the rules or it contains only minor informalities that do not affect the Office's ability to render a decision, the Patent Appeal Center will accept the appeal brief and forward it to the examiner for consideration.

If the Patent Appeal Center determines that the appeal brief is non-compliant and sends appellant a notice of non-compliant brief requiring a corrected brief, appellant will be required to file a corrected brief within the time period set forth in the notice to avoid the dismissal of the appeal.

If appellant disagrees with the holding of noncompliance, a petition under 37 CFR 41.3 may be filed.

• Filing a petition will not toll the time period for reply set in the notice.
• Appellant must timely reply to the notice or the Office communication that requires an amended brief.

Once an appeal brief is accepted by the Board as in compliance, the appeal brief will not later be held as defective by the Patent Appeal Center or the examiner.

The responsibility of the Board for determining whether appeal briefs comply is not considered a transfer of jurisdiction when an appeal brief is filed, but rather is only a transfer of the specific responsibility of notifying appellants under 37 CFR 41.37(d) of the reasons for non-compliance.

 

» 1206 Amendments and Affidavits or Other Evidence Filed With or After Appeal