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
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 his or her 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 time period provided under 37 CFR 1.134 and 1.136.
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 regardless of whether 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.
- It may be admitted if it cancels claims or complies with any requirement of form expressly set forth in a previous Office action; presents rejected claims in better form for consideration on appeal; or amends the specification, including claims, upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.
If applicant files a reply under 37 CFR 1.111 in response to a second non-final rejection and thereafter files a notice of appeal before the Office considers the reply, the notice of appeal is defective and the Office will answer the reply in due course.
An appeal is presumed to be taken from the rejection of all claims under rejection in a particular application, absent any amendment cancelling claims that appellant does not wish to appeal.
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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1204.02 Pre-Appeal Brief Review Request and Conference Pilot Program
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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.
