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Rules of Conduct Board of Appeals

37 CFR 41


What to look for in appeal test questions?

New rejections by the Board,

Requests for remand to the examiner.


When must an appeal brief be filed?

Within Two extendable months from the date that the Notice of Appeal is received at the Patent Office.

Automatically extendable up to an additional 5 months.

**Use Certificate of Mailing or Express Mail
**Send self addressed card.


Brief Must Set Forth the Following or Fix Within 30 days

1. Identification of the real party in interest;
-Old if you forgot, they send back
-Now presumed to be inventor.
2. Related appeals and interferences;
-Presumed that there are none.
3. A summary of claimed subject matter of each independent claim and dependent claim separately argued;
-Typically independent, but argue each rejection
4. Arguments directed to each and every rejection with separate headings for each;
-Cite Cases if you have to.
5. An appendix containing a copy of the claims appealed.
-Handy to use


Can You Amend After Filing Appeal?

Only to:
1. Cancel claims that do not affect other claims,
2. Rewrite dependent claims into independent format.


Will Amendments be admitted in an Appeal?

They will not be admitted without a showing of good cause and they must overcome all outstanding rejections,

Must be submitted before filing.


Examiner's Answer: New Rejection

Can re-open prosecution on new rejections and file reply brief.
- no amendments, affidavits, declarations
- File a Petition if not labeled as New Rejection

Appeal maintained.


Oral Hearing

May be requested within 2 Months after the date the Examiner's Answer is sent OR waived.

Must pay fee.

Can extend for causes.


Reply Brief

Applicant has 2 months following Examiner's Answer to file a Reply Brief, which is now a matter of right.

Extend for cause.


Board Decision

1. Affirm or reverse the Examiner in whole or in part (2 Months), or remand (30 day response).
2. Issue a statement, which constitutes a new ground of rejection.


What if Board issues its own rejection?

1. Applicant may submit an appropriate amendment of the claims so rejected or a showing of facts, or both and have the matter reconsidered by the Examiner (can appeal again);

2. The applicant may have the new rejection reconsidered by the board.


Examiner Affirmed, what is your option and deadline?

Request a rehearing within two months, or Appeal to CAFC (99%) or District Court or Eastern District of Virginia (FRCP).

You can do nothing and have the application to move "without further adjustment"


Board issues new ground of rejection, what is your option and deadline?

Submit response and have examiner consider

request rehearing and address new ground of rejection with Examiner.


What about affidavits and similar evidence in Appeals?

They are not admitted into the file after the Notice of Appeal is filed without a showing of why they were not earlier presented

They must overcome all outstanding rejections.



1. A rejection cannot be appealed unless it is a Final Rejection or has been made twice.

2. An oral argument before the Board of Appeals is held only if requested in writing by the applicant and a fee paid.

3. Whenever the Board makes a new ground of rejection, the applicant may either ask that the new ground be reviewed by the Board OR ask that the new ground be reviewed by the Examiner via reopening prosecution.


Amendments Before You File Appeal

Handled under Examiner discretion

Rule 1.116


What if Board Reverses?

Do nothing, you get Notice of Allowance for everything.

Case is still pending.