Appeal Process (1200)

Question 1

What is the PTAB?

Answer 1

Patent Trial and Appeal Board, which handles appeals from final rejections.

Question 2

When can an applicant file an appeal?

Answer 2

After receiving a final rejection of one or more claims.

Question 3

What is the first step in initiating an appeal?

Answer 3

Filing a Notice of Appeal and paying the appeal fee.

Question 4

What is the deadline to file a Notice of Appeal?

Answer 4

Within the time allowed for response to the final rejection (usually 3 months).

Question 5

Can you file an RCE after filing a Notice of Appeal?

Answer 5

Yes, if the appeal is withdrawn.

Question 6

What must be filed after the Notice of Appeal?

Answer 6

An Appeal Brief within 2 months of the Notice.

Question 7

What happens if the Appeal Brief is not filed on time?

Answer 7

The appeal is dismissed and the application becomes abandoned.

Question 8

Who reviews the Appeal Brief?

Answer 8

The examiner, then the PTAB if prosecution is not reopened.

Question 9

What is an Examiner’s Answer?

Answer 9

A response from the examiner addressing the arguments in the Appeal Brief.

Question 10

Can the applicant reply to the Examiner’s Answer?

Answer 10

Yes, by filing a Reply Brief.

Question 11

What must be included in an Appeal Brief?

Answer 11

Statement of real party in interest, related appeals, status of claims, and arguments.

Question 12

Are new amendments allowed in the Appeal Brief?

Answer 12

No, unless made to cancel claims or adopt examiner’s suggestions.

Question 13

Can evidence be submitted with an Appeal Brief?

Answer 13

No new evidence is permitted at this stage.

Question 14

Can oral hearings be requested in appeals?

Answer 14

Yes, the applicant may request an oral hearing before the PTAB.

Question 15

Is the PTAB decision binding?

Answer 15

Yes, unless reversed through further appeal.

Question 16

Can you appeal a restriction requirement?

Answer 16

No, that must be petitioned, not appealed.

Question 17

What happens if PTAB reverses all rejections?

Answer 17

The application is returned to the examiner for further action toward allowance.

Question 18

What if PTAB affirms the rejections?

Answer 18

The applicant may file a request for rehearing or appeal to the Federal Circuit.

Question 19

Can new grounds of rejection be introduced by the PTAB?

Answer 19

Yes, under 37 CFR §41.50(b).

Question 20

What can the applicant do if new grounds of rejection are made?

Answer 20

Reopen prosecution or request rehearing.

Question 21

What is the purpose of a petition?

Answer 21

To challenge procedural or administrative decisions by the USPTO.

Question 22

Can you appeal an advisory action?

Answer 22

No, it must be addressed via petition.

Question 23

Can you appeal a non-final rejection?

Answer 23

No, only final rejections may be appealed.

Question 24

When should a petition be used instead of an appeal?

Answer 24

For matters like extensions of time, restriction requirements, or revival.

Question 25

Who decides a petition?

Answer 25

The Director or delegated official, not the PTAB.

Question 26

What happens if both appeal and petition are filed?

Answer 26

The USPTO addresses each on its own merits.

Question 27

What is the difference in subject matter between appeal and petition?

Answer 27

Appeals cover substantive claim rejections; petitions handle procedural issues.

Question 28

Is a petition required before an appeal?

Answer 28

No, unless you're contesting something unrelated to claim rejections.

Question 29

Can petitions delay appeal deadlines?

Answer 29

No, deadlines for appeals run independently.

Question 30

What happens if a petition is denied?

Answer 30

The original USPTO action stands unless appealed further (if applicable).

Question 31

What is a pre-appeal brief request for review?

Answer 31

A program allowing early review of appealability before filing a full brief.

Question 32

What is the deadline for filing a pre-appeal request?

Answer 32

With the Notice of Appeal.

Question 33

What happens if pre-appeal is successful?

Answer 33

The rejection is withdrawn or prosecution is reopened.

Question 34

What if pre-appeal panel finds appealable issues?

Answer 34

The case proceeds to a full appeal.

Question 35

What is a Request for Rehearing?

Answer 35

A request to PTAB to reconsider their decision.

Question 36

What is the deadline for filing a Request for Rehearing?

Answer 36

Within 2 months of the PTAB decision.

Question 37

Can you submit new evidence with a Request for Rehearing?

Answer 37

No, it is limited to arguments already on record.

Question 38

What is an appeal conference?

Answer 38

A meeting of three examiners to consider whether the appeal should proceed.

Question 39

Is an appeal conference mandatory?

Answer 39

Yes, before the Examiner's Answer is written.

Question 40

What is a remand by the PTAB?

Answer 40

An order to the examiner to take further action before PTAB proceeds with the appeal.

Question 41

Can the PTAB reverse in part and affirm in part?

Answer 41

Yes, decisions can be mixed for different claims.

Question 42

Is there a fee for oral argument?

Answer 42

Yes, a separate fee must be paid when requesting it.

Question 43

What is the difference between affirming and sustaining a rejection?

Answer 43

There is no practical difference; both uphold the examiner’s rejection.

Question 44

Can you withdraw an appeal?

Answer 44

Yes, any time before decision by the PTAB.

Question 45

What happens if all claims are cancelled before appeal?

Answer 45

The appeal is moot and dismissed.

Question 46

Is appeal available in design and plant patent applications?

Answer 46

Yes, the process is generally the same.

Question 47

Where is the final appeal taken after PTAB?

Answer 47

To the U.S. Court of Appeals for the Federal Circuit.

Question 48

What is the standard of review at the Federal Circuit?

Answer 48

Substantial evidence and legal correctness.

Question 49

Can you use the PTAB’s decision in future applications?

Answer 49

Yes, but only as persuasive, not binding authority.

Question 50

What is the goal of the appeal process?

Answer 50

To resolve disputes about claim rejections on the merits.

Question 51

What is a Notice of Appeal?

Answer 51

The document filed to initiate an appeal to the PTAB.

Question 52

What is the PTAB?

Answer 52

Patent Trial and Appeal Board, the body that hears patent appeals.

Question 53

What is an Appeal Brief?

Answer 53

A written argument submitted to contest final rejections.

Question 54

What is an Examiner’s Answer?

Answer 54

A response from the examiner to the Appeal Brief.

Question 55

What is a Reply Brief?

Answer 55

An optional response to the Examiner’s Answer.

Question 56

What is a Request for Rehearing?

Answer 56

A request asking the PTAB to reconsider its decision.

Question 57

What is a petition?

Answer 57

A request to the USPTO Director for procedural relief.

Question 58

What is the difference between petition and appeal?

Answer 58

Petitions handle procedural issues; appeals challenge rejections.

Question 59

What is the pre-appeal brief request for review?

Answer 59

A request for early assessment of whether the appeal should proceed.

Question 60

What is oral argument?

Answer 60

A spoken presentation to the PTAB during an appeal.

Question 61

What is a final rejection?

Answer 61

An examiner's official decision that the application cannot proceed.

Question 62

What is an appealable issue?

Answer 62

A substantive rejection of one or more claims.

Question 63

What is a restriction requirement?

Answer 63

A decision that multiple inventions are present; must be petitioned, not appealed.

Question 64

What is prosecution?

Answer 64

The process of negotiating with the USPTO to obtain a patent.

Question 65

What is a remand?

Answer 65

A PTAB instruction to the examiner to take further action.

Question 66

What is abandonment?

Answer 66

When an application is no longer active due to missed deadlines or failure to respond.

Question 67

What is an oral hearing?

Answer 67

An in-person or virtual session where parties argue before the PTAB.

Question 68

What is a decision on appeal?

Answer 68

The PTAB’s ruling affirming, reversing, or remanding the rejection.

Question 69

What is the Federal Circuit?

Answer 69

The court that reviews PTAB decisions.

Question 70

What is 37 CFR §41.50?

Answer 70

The regulation covering PTAB decisions and new grounds of rejection.