Chapter 1200: Appeal
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.
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The Executive Summaries from the main chapter sections have been copied here for your convenience (subsections are not included here). They will help you remember what each main section of the Guidebook (MPEP) covers as you answer the questions from the quizzes above.
This section provides an introduction to appeals as a judicial procedure to resolve the differences of opinion of prior art rejections or other patentability issues.
Each appeal, derivation proceeding, post-grant review, and inter partes review shall be heard by at least three members of the Board, who shall be designated by the Director. Only the Patent Trial and Appeal Board may grant rehearings.
This section covers the administrative handling of appeal related documents. The docketing procedure is covered as well as the handling of documents for applications for patents that have been made special. In these cases, the examination will continue to be special including throughout an appeal to the Board.
This section covers details on the Notice of Appeal. Appeal fees, appeals by the patent applicant and appeals by the patent owners are all touched upon.
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.
This section covers the filing of amendments and affidavits or other evidence with or after the appeal. Amendments are not a matter of right. The times when amendments may be submitted and for what purpose are outlined here. For instance, amendments filed to cancel claims or to rewrite dependent claims into independent form may be filed after the filing of an Appeal Brief.
After an appeal brief has been filed and the examiner has considered the issues on appeal, the examiner may:
- reopen prosecution to enter a new ground of rejection with approval from the supervisory patent examiner ;
- allow the application if the examiner determines that the rejections have been overcome and no new ground of rejection is appropriate; or
- maintain the appeal by conducting an appeal conference and drafting an examiner’s answer.
This section covers reply briefs and the fee for forwarding the appeal. Appellant may file a single reply brief as a matter of right within the later of two months from the date of either the examiner’s answer, or a decision refusing to grant a petition under 37 CFR 1.181 to designate a new ground of rejection in an examiner’s answer.
This section covers oral hearings in detail. 37 CFR 41.47(b) provides that an appellant who desires an oral hearing before the Board must request the hearing by filing, in a separate paper captioned “REQUEST FOR ORAL HEARING,” a written request therefor, accompanied by the appropriate fee, within 2 months after the date of the examiner’s answer or the date of filing of a reply brief, whichever is earlier.
This time period ensures that any request for oral hearing is received not later than when jurisdiction over the proceeding passes to the Board. This time period may only be extended by filing a request under either 37 CFR 1.136(b) or, if the appeal involves an ex parte reexamination proceeding, under 37 CFR 1.550(c).
Any amendment or other paper relating to the appeal filed thereafter, but prior to the decision of the Board, may be considered by the examiner only in the event the case is remanded for that purpose.
To avoid the rendering of decisions by the Board in applications which appellants have decided to abandon or to refile as continuations, appellants should promptly inform the Clerk of the Board in writing as soon as they have positively decided to refile or to abandon an application containing an appeal awaiting a decision. Failure to exercise appropriate diligence in this matter may result in the Board’s refusing an otherwise proper request to vacate its decision.
This section covers a remand to the Director or the Board. There is no obligation resting on the Board to consider new or amended claims that are submitted while the case is on appeal. However, if a proposed amendment results in the abandonment of the appeal (such as one canceling the claims on appeal), the amendment must be entered.
This section covers the Board's requirement for the appellant to address any matter deemed appropriate for a reasoned decision on the appeal.
This section covers the decision by the Board. During its decision, the Board of Appeals may affirm or reverse the examiner or find a new ground of rejection.
After an appeal to the Board has been decided, a copy of the decision is provided to appellant and placed in IFW. The 63-day time period for filing an appeal or commencing a civil action under 37 CFR 90.3, or the two month period for filing a request for rehearing under 37 CFR 41.52, begins to run from the “MAIL DATE” if the decision is provided by paper delivery, or the “NOTIFICATION DATE” if the decision is provided by electronic delivery.
This section covers the withdrawal or dismissal of appeal. Topics discussed include partial withdrawals, dismissal of appeal, and when claims stand allowed.
This section outlines the process for judicial review of patent applications, reexamination proceedings, inter partes review, post-grant review, covered business method review, and derivation proceedings. It also covers the time for filing a notice of appeal or commencing civil action (which is 63 days of the Board's decision) and the extension of time to seek judicial review.
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