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Chapter 1200: Appeal


Summary

Rankings

Frequency

Training

Video Digest

Mind Map

Objectives

Key Terms

 

 

   Summary:

An applicant may appeal to the Patent Trial and Appeal Board when he or she believes their application deserves to be allowed to patent in spite of a rejection. The circumstances for which it is appropriate to file an appeal and what is required to file one are discussed here.

In order to appeal, an individual must follow a particular prosecution process which involves filing a Notice of Appeal and two months later an Appeal Brief. After an Appeal Brief is filed, the Board will decide whether or not to accept the appeal and if so, they will begin prosecuting it. The Board will reply to the applicant by either requesting more documents or by allowing the questionable claims to patent. If the Board denies the claims, the applicant may appeal the decision to the U.S. Court of Appeals for Federal Circuit.

Appeals will definitely be tested on the exam and probably to a fairly large extent. Appeal topics to know include; the Appeal Brief, actions after an appeal and the withdrawal or dismissal of the appeal.

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   Chapter Ranking Chart:

Importance Ranking:
4-Stars
  
Volume of Material:
2-Stars
  
Complexity:
4-Stars
  
Overall Score:
3.3
  



   MPEP Section Frequency:
Key
2
4
6
8
10
1203
   
1204
  1204.01  
1205
  1205.01 1205.02  
1209
   
1210
   
1214.01
   
1215
  1215.01 1215.04  
1216
   

 

 

   Patent Training Workshop Videos:

 


   Video Digest:

 


   Mindmap:


   Objectives

  • Learn the details of Appeal Briefs.
  • Become familiar with the withdrawal or dismissal of appeals.
  • Review oral hearings.
  • Review the examiner’s answer and reply brief.
  • Learn the options available to the applicant if the appeal is denied.
  • Know the following laws and rules:

37 C.F.R. 41.31

Appeal to Board.

37 C.F.R. 41.37

Appeal brief.

37 C.F.R. 41.33

Amendments and affidavits or other evidence after appeal.

37 C.F.R. 41.39

Examiner’s answer.

37 C.F.R. 41.41

Reply brief.

37 C.F.R. 41.43

Examiner’s response to reply brief.

37 C.F.R. 41.47

Oral hearing.

37 C.F.R. 41.35

Jurisdiction over appeal.

 
37 C.F.R. 41.50

Decisions and other actions by the Board.

37 C.F.R. 41.52

Rehearing.

37 C.F.R. 41.54

Action following decision.

35 U.S.C. 134

Appeal to the Board of Patent Appeals and Interferences.

 


   Key Terms