2274 Appeal Brief
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I. AMENDMENT
Where the appeal brief is not filed, but within the period allowed for filing the brief an amendment is presented which places the claims of the patent under reexamination in a patentable condition, the amendment may be entered.
- Amendments should not be included in the appeal brief.
II. TIME FOR FILING APPEAL BRIEF
The time for filing the appeal brief is 2 months from the date of the appeal.
III. EXTENSION OF TIME FOR FILING APPEAL BRIEF
In the event that the patent owner finds that he or she is unable to file a brief within the time allowed by the rules, he or she may file a request with the appropriate extension of time fee, to the Central Reexamination Unit (CRU) or Technology Center (TC), requesting additional time.
- The request should contain the address to which the response is to be sent.
IV. FAILURE TO TIMELY FILE APPEAL BRIEF
Failure to file the brief and/or the appeal brief fee within the permissible time will result in dismissal of the appeal.
- The reexamination prosecution is then terminated, and a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) will subsequently be issued indicating the status of the claims at the time of appeal.
V. REQUIREMENTS FOR THE APPEAL BRIEF
A fee is required when the appeal brief is filed for the first time in a particular reexamination proceeding.
- In the case of a merged proceeding, one original copy of the brief should be provided for each reexamination proceeding and reissue application in the merged proceeding.
- In addition, a copy of the brief must be served on any third party requesters who are part of the merged proceeding.
For the sake of convenience, the copy of the claims involved should be double spaced and should start on a new page.
- Note that the copy of the claims on appeal in reexamination proceedings must include all underlining and bracketing to reflect the changes made to the original patent claims throughout the prosecution of the reexamination.
- In addition, any new claims added in the reexamination should be completely underlined.
The brief, as well as every other paper relating to an appeal, should indicate the number of the art unit to which the reexamination is assigned and the reexamination control number.
Patent owners are reminded that their briefs in appeal cases must be responsive to every ground of rejection stated by the examiner.
- A reply brief, if filed, shall be entered, except that amendments or affidavits or other evidence are subject to 37 CFR 1.116 and 41.33.
VI. SEEKING REVIEW OF A FINDING OF A SUBSTANTIAL NEW QUESTION OF PATENTABILITY
The patent owner may seek review on the examiner's SNQ determination before the Board along with any appeal of the examiner's rejections.
- To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board.
The patent owner may file a single request for rehearing for both the decision on the SNQ issue and the merits decision on the examiner's rejections, resulting in a single final decision for purposes of judicial review.
VII. DEFECTIVE APPEAL BRIEF
Since May 25, 2010, the Board of Patent Appeals and Interferences (BPAI), now the Patent Trial and Appeal Board, (Board), has the sole responsibility for determining whether appeal briefs filed in ex parte reexamination proceedings comply with 37 CFR 41.37, and will complete the determination before the appeal brief is forwarded to the examiner for consideration.
- The determination should be completed within approximately one month from the filing of the appeal brief.
Appellant must traverse every ground of rejection set forth in the final rejection that appellant is presenting for review in the appeal.
- Oral argument at the hearing will not remedy a deficiency of failure to traverse a ground of rejection in the brief.
- Ignoring or acquiescing in any rejection, even one based upon formal matters which could be cured by subsequent amendment, will invite summarily affirmance of the rejection.
The reexamination prosecution is considered terminated as of the date of the dismissal of the appeal.
- After the appeal is dismissed, the examiner will proceed to issue a Notice of Intent to Issue Ex Parte Reexamination Certificate for the proceeding.
