MPEP Chapter 1200: Appeal Flashcards
(25 cards)
What actions/rejections can be appealed to PTAB?
Second or Final Rejections
How do you begin appeal?
File a Notice of Appeal + fee before or after After Final Response filed
May require extensions of time to keep app alive until Notice of Appeal is filed
Notice of Appeal
Does not need to be signed to identify the claims appealed (PTO will assume all if not designated)
Deadlines on Appeal
2 months
Appeal Brief Due Date
Due 2 months from date Notice of Appeal is RECEIVED at PTO
Extendable up to 5 months via Rule 136(a)
Appeal Brief Details
-Identify the real party in interest
-Identify related appeal and interferences
-Summary of claimed subject matter of each independent and dependent claim argued separately
-Arguments for each and every rejection
-Appendix with copy of claims appealed
Non-Complaint Appeal Brief?
PTO will give you 1 month to fix
Amendments After Appeal and Brief
-Cancel claims that do not affect other claims
-Rewrite dependent claims into independent format
Affidavits are only allowed…
In context of re-opening prosecution
Examiner’s Answer
Examiner’s answer to Appeal Brief
May set forth new grounds of rejection, which gives 2 options to appellant:
-Reopen prosecution
-Maintain appeal and respond to new rejection with Reply Brief
Reply Brief
Reply to new grounds of rejection set forth in Examiner’s Answer
CANNOT submit amendments or Rule 132 affidavits
Requires a FORWARDING FEE
New Grounds of Rejection Not Designated as Such
File a Petition and Fee under Rule 181
Used if appellant wants to re-open prosecution
Not required if you want to argue and maintain Appeal, just file Reply Brief
Reply Brief Due Date
Due 2 months from Examiner’s Answer
Extendable ONLY FOR CAUSE under Rule 136(b)
Board will formally take jurisdiction after Reply Brief is filed or the 2-month period expires
Oral Hearing
May be requested within 2 months after Examiner’s Answer is sent
Extendable ONLY FOR CAUSE under Rule 136(b)
Requires a fee
Not requested timely? Waived, Appeal decided on paper
Board Decision
- Affirm or reverse Examiner in whole or part, or remand to Examiner.
- New grounds of rejection.
Board Decision to Remand to Examiner
If remanding for further consideration of a rejection:
Examiner submits Supplemental/Substitute Examiner’s Answer
Applicant can reopen prosecution or file a Reply Brief
Board Decision with New Grounds of Rejection
Appellant Choices:
1. Reopen prosecution by submitting amendments or affidavits
If Examiner rejects, it can be appealed (2nd rejection)
- Ask for the Board to reconsider (Request for Rehearing)
Request for Rehearing
Due 2 months after Board Decision
Extendable ONLY FOR CAUSE under Rule 136(b)
Filing a Continuation or RCE During Appeal
Applicant can file Rule 1.53(b), Rule 1.53(d), or RCE at any time during appeal
Can expressly abandon parent - RCE and CPA
or
Continue Appeal - 1.53(b)
Court Review
After board affirmes Examiner, appellant can seek review from:
-CAFC
or
-US District Court for Eastern District of Virginia (allows new evidence)
Must request within 63 days of final Board decision/date of rehearing decision
Appeal Actions that Require a Fee
-Notice of Appeal
-Reply Brief = forwarding fee
-Request for Oral Hearing
-Appeal to CAFC
Appeal Actions that Require NO Fee
-Appeal Brief
-Request for Rehearing
Appeal Actions that are Automatically Extendable
Filing Appeal Brief
2 months + up to 5 month extension
Appeal Actions that are For Cause Extendable
-Reply Brief
-Request for Oral Hearing
-Request for Rehearing
