The United States Patent and Trademark Office (Office) in administering the Patent Laws makes many decisions of a substantive nature which the applicant may feel deny them the patent protection to which they are entitled. The differences of opinion on such matters can be justly resolved only by prescribing and following judicial procedures. Where the differences of opinion concern the denial of patent claims because of prior art or other patentability issues, the questions thereby raised are said to relate to the merits, and appeal procedure within the Office and to the courts has long been provided by statute (35 U.S.C. 134 ).
Throughout this chapter, "Board" is used to refer the Patent Trial and Appeal Board and its predecessor organizations, the Board of Patent Appeals and Interferences and the separate Board of Appeals and Board of Interferences.
Unless otherwise noted, the discussion of the ex parte appeal practice before the Board in this chapter is primarily directed to appeals wherein the notice of appeal was filed on or after January 23, 2012, or to proceedings commenced on or after September 16, 2012. See Pub. L. 112-29 (September 16, 2011)(known as the Leahy-Smith America Invents Act or the AIA) and final rule "Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals, 76 Fed. Reg. 72270 (November 22, 2011).
For information pertaining to the Board’s ex parte appeal practice and procedure in effect prior to September 16, 2012, see Chapter 1200 in the MPEP 8th Edition, Rev. 9 (August 2012)(available on the USPTO web site at www.uspto.gov/web/offices/ pac/mpep/old/mpep_E8R9.htm.
The line of demarcation between appealable matters for the Board and petitionable matters for the Director of the U.S. Patent and Trademark Office (Director) should be carefully observed. The Board will not ordinarily hear a question that should be decided by the Director on petition, and the Director will not ordinarily entertain a petition where the question presented is a matter appealable to the Board. Ordinarily, an objection is petitionable, and a rejection is appealable, but when the objection is "determinative of the rejection" the matter may be addressed by the Board. See In re Hengehold, 440 F.2d 1395, 1403, 169 USPQ 473, 479 (CCPA 1971) and Ex parte Frye, 94 USPQ2d 1072, 1078 (Bd. Pat. App. & Int. 2010)(precedential). Some matters which have been determined to be petitionable and not appealable include: a requirement for restriction or election of species, finality, non-entry of amendments, and holdings of abandonment. As 37 CFR 1.181(f) states that any petition not filed within 2 months from the action complained of may be dismissed as untimely and since 37 CFR 1.144 states that petitions from restriction requirements must be filed no later than appeal, petitionable matters will rarely be present in a case by the time it is before the Board for a decision. In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990).
This chapter is primarily directed to ex parte appeals. For appeals in inter partes reexamination proceedings, see 37 CFR 41.60 to 41.81 and MPEP §§ 2674 to 2683.
35 U.S.C. 6 provides for a Patent Trial and Appeal Board as follows:
35 U.S.C. 6 was amended in Pub. L. 112-29, sec. 7. In addition to changing the duties of the Board and clarifying its membership, the name of the Board was changed from the Board of Patent Appeals and Interferences (BPAI) to the Patent Trial and Appeal Board (PTAB), effective September 16, 2012. Consistent with 35 U.S.C. 6(a), examiners should treat any reference to the BPAI (or its predecessors, the separate Board of Appeals and Board of Interferences) as a reference to the PTAB. In a citation to a decision of the Board (e.g., in an Office action or Appeal Brief), decisions mailed prior to September 16, 2012 should continue to be cited as decisions of the BPAI or its predecessor organizations.
As provided by 37 CFR 41.2, "Board" means the Patent Trial and Appeal Board and includes:
"Board member" means the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges.
Ex parte appeals to the Board, and documents relating thereto filed prior to a docketing notice from the Board, are reviewed to determine the business unit of the Office responsible for their processing. Appeal documents, such as the notice of appeal, appeal brief, pre-appeal brief request for review (See MPEP § 1204.02), and request for extension of time to file the brief, are processed by the Patent Appeal Center.
The Patent Examining Corps has jurisdiction over the application to consider the appeal brief, conduct an appeal conference, draft an examiner's answer, and decide the entry of amendments, evidence, and information disclosure statements filed after final or after notice of appeal. Jurisdiction over the proceeding passes to the Board upon the filing of a reply brief under 37 CFR 41.41 or the expiration of the time in which to file such a reply brief, whichever is earlier. See 37 CFR 41.35.
The Patent Appeal Center will forward the application to the Board after the jurisdiction has transferred to the Board and, where waiver of the appeal forwarding fee doesn’t apply, the Patent Appeal Center has processed the appeal forwarding fee. Even if applicant has filed a reply brief, the appeal will not be forwarded to the Board prior to the payment of the appeal forwarding fee.
Notices of appeal, appeal briefs, and reply briefs are reviewed for compliance with the appropriate rules prior to being forwarded to the examiner. As such, examiners should not identify these documents as defective or noncompliant for failure to comply with procedural rules. In the rare situation where a substantial defect in an appeal document is identified after these reviews, the examiner should contact the Patent Appeal Center to determine whether corrective action should be taken.
The Patent Appeal Center may return the application to the examiner for corrections to the examiner's answer or other outgoing documents when appropriate.
If the brief is not filed within the time designated by 37 CFR 41.37, the applicant will be notified that the appeal stands dismissed. See MPEP § 1215.
The Board’s docketing procedure is designed to provide notification to the appellant within one month of receipt from the Patent Appeal Center of an appealed application at the Board that (A) the appeal has been received at the Board and docketed, or (B) the appeal is being remanded to the examiner for attention to unresolved matters.
If the appeal is ready for docketing three events will occur:
If the appeal cannot be docketed due to matters requiring further attention in the patent examining corps, the appeal will be remanded to the patent examining corps with an order indicating why the appeal cannot be docketed. Notification of the remand, in the form of a copy of the order, will be mailed to the appellant.
The docketing notice or order indicating why the appeal cannot be docketed will provide the appellant and the examiner with notification that (A) the appeal is under the jurisdiction of the Board; or (B) that the appeal is being returned to the patent examining corps to resolve matters requiring attention prior to decision of the appeal. Thus, the appellant will know to which organization to look for the next communication in the appealed application.
If the applicant remains diligent, an application for patent that once has been made special and advanced out of turn by the United States Patent and Trademark Office (Office) for examination will continue to be special throughout its entire course of prosecution in the Office, including appeal, if any, to the Board. See MPEP § 708.01.
A petition to make an application special after the jurisdiction of the appeal has been transferred to the Board may be addressed to the Board. Thus, no such petition will be granted unless the brief has been filed and applicant has made the same type of showing required by the Director under 37 CFR 1.102. Therefore, diligent prosecution is essential to a favorable decision on a petition to make special.
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Public Law 112-29, sec. 10 authorizes the Director to set or adjust fees "established, authorized, or charged under title 35." The fees for appeal as set forth in 35 U.S.C. 41(a)(6) have been adjusted by rule at 37 CFR 41.20(b). See 37 CFR 41.20(b)(1) for the fee for the filing of a notice of appeal, 37 CFR 41.20(b)(2)(i) for filing an appeal brief in an application or ex parte reexamination proceeding, and 37 CFR 41.20(b)(3) for a request for oral hearing.
Appeal fees (notice of appeal, petition, and appeal forwarding fees) due under 37 CFR 41.20 cannot be paid using a general authorization to a deposit account under 37 CFR 1.25(b), which only authorizes payment of fees under 37 CFR 1.16 through 1.18.
Effective March 19, 2013, the fee for filing an appeal brief in an application or ex parte reexamination (37 CFR 41.20(b)(2)(i) ) was reduced to $0, and a new fee for forwarding an appeal in an application or ex parte reexamination proceeding to the Board after the mailing of an examiner's answer was added at 37 CFR 41.20(b)(4). See 37 CFR 41.45 and MPEP § 1208.01 for additional information pertaining to the forwarding fee.
For appeal fees due upon the reinstatement of an appeal, see MPEP § 1204.01.
Under 37 CFR 41.31(a)(1), an applicant for a patent dissatisfied with the primary examiner’s decision in the second or subsequent rejection of the applicant's claims may appeal to the Board for review of the examiner’s rejection by filing a notice of appeal and the required fee set forth in 37 CFR 41.20(b)(1) within the time period provided under 37 CFR 1.134 and 1.136. A notice of appeal may be filed after any of the claims has been twice rejected, regardless of whether the claim(s) has/have been finally rejected. The limitation of "twice rejected" does not have to be related to a particular application. See Ex Parte Lemoine, 46 USPQ2d 1420, 1423 (Bd. Pat. App. & Inter. 1994) ( "so long as the applicant has twice been denied a patent, an appeal may be filed" ). For example, if any claim was rejected in a parent application, and the claim is again rejected in a continuing application, then applicant can choose to file an appeal in the continuing application, even if the claim was rejected only once in the continuing application. Applicant cannot file an appeal in a continuing application, or after filing a request for continued examination (RCE) under 37 CFR 1.114, until the application is under a rejection. Accordingly, applicant cannot file a notice of appeal with an RCE, even if the application has been twice rejected prior to the filing of the RCE.
If appellant files an amendment, a notice of appeal and an appeal brief on the same date after the mailing of a final action, 37 CFR 1.116 applies. Such an amendment filed after a final action is not entered as a matter of right. It may be admitted if it cancels claims or complies with all requirements of form expressly set forth in previous Office actions; presents rejected claims in better form for consideration on appeal; or amends the specification, including claims, upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.
If applicant files a reply under 37 CFR 1.111 in response to a second or subsequent non-final rejection and later files a notice of appeal before the Office considers the reply, or the reply is filed on the same day as the notice of appeal, the notice of appeal is defective and the Office will answer the reply under 37 CFR 1.111 in due course. Ordinarily, a notice of appeal would have been proper when at least one claim has been twice rejected. In this instance, however, since applicant has elected to request reconsideration of the rejection (or further examination) by filing a reply under 37 CFR 1.111 rather than directly appealing from the second non-final rejection, the notice of appeal is premature. The Office has not had the opportunity to consider the reply under 37 CFR 1.111 and issue an Office action in view of the reply. (Note that this is different than after-final situations where a reply under 37 CFR 1.116 is not entered as matter of right and applicant is appealing from the final rejection). Applicant must wait to file any appeal until the examiner considers the reply and the claims are rejected again. Once the Office action is mailed in response to the reply applicant may file another notice of appeal under 37 CFR 41.31.
Under 37 CFR 41.31(c), an applicant is presumed to be appealing all claims under rejection in a particular application unless cancelled by an amendment filed by the applicant and entered by the Office. Thus, an appeal is presumed to be taken from the rejection of all pending claims under rejection in the application regardless of whether the notice of appeal identifies fewer or more than all pending claims under rejection. If an appellant does not file an amendment cancelling claims that the appellant does not wish to appeal, but then also fails to provide any argument in the appeal brief directed to those claims, any challenge to that ground of rejection has been waived, and the Board has discretion to simply affirm any rejections against such claims. See e.g. Hyatt v. Dudas, 551 F.3d 1307, 1314, 89 USPQ2d 1465, 1470, (Fed. Cir. 2008). Appellants are cautioned that any waiver of a challenge to a rejection, including a non-statutory double patenting rejection, may result in a jurisdictional issue should the appellant seek judicial review of the Board decision affirming the examiner's rejection of the claims either by an appeal to the U.S. Court of Appeals for the Federal Circuit (35 U.S.C. 141 ) or by a civil action in the U.S. District Court for the Eastern District of Virginia (35 U.S.C. 145 ). Alternatively, the Court may summarily affirm the non-statutory double patenting rejection without considering other grounds of rejection challenged on appeal. See also MPEP § 1205.02.
Although the rules do not require that the notice of appeal be signed, applicants may file notices of appeal which are signed. It should be noted that the elimination of the requirement to sign a notice of appeal does not affect the requirements for other papers (such as an amendment under 37 CFR 1.116 ) submitted with the notice, or for other actions contained within the notice, e.g., an authorization to charge fees to a deposit account or to a credit card, to be signed. See MPEP § 509. Thus, failure to sign the notice of appeal may have unintended adverse consequences; for example, if an unsigned notice of appeal contains an (unsigned) authorization to charge the notice of appeal fee to a deposit account, the notice of appeal will be unacceptable because the notice of appeal fee is lacking.
The notice of appeal must be filed within the period for reply set in the last Office action, which is normally three months for applications. See MPEP § 714.13. For example, failure to remove all grounds of rejection and otherwise place an application in condition for allowance or to file an appeal after final rejection will result in the application becoming abandoned, even if one or more claims have been allowed. The notice of appeal and appropriate fee may be filed up to six months from the date of the Office action (e.g., a final rejection) from which the appeal was taken, so long as an appropriate petition and fee for an extension of time under 37 CFR 1.136(a) is filed either prior to or with the notice of appeal.
The use of a separate letter containing the notice of appeal is strongly recommended. Form PTO/SB/31 may be used for filing a notice of appeal. Appellant must file an appeal brief in compliance with 37 CFR 41.37 accompanied by the fee set forth in 37 CFR 41.20(b)(2) within two months from the date of filing the notice of appeal. See MPEP § 1205. Effective March 19, 2013, the fee for filing an appeal brief in an application or ex parte reexamination was set at $0. For as long as this fee remains at $0, appeal briefs will not be held defective for failure to pay this fee or make any statement about this fee.
37 CFR 41.31(a)(2) and (a)(3) provide for appeal to the Board by the patent owner from any decision in an ex parte reexamination proceeding adverse to patentability, in accordance with 35 U.S.C. 306 and 35 U.S.C. 134. See also MPEP § 2273.
In anex parte reexamination filed before November 29, 1999, the patent owner may appeal to the Board after the second rejection of the claims.
In an ex parte reexamination filed on or after November 29, 1999, the patent owner may appeal to the Board only after the final rejection of one or more claims in the particular reexamination proceeding for which appeal is sought.
The fee for filing the notice of appeal by a patent owner is set forth in 37 CFR 41.20(b)(1), and the time period to pay the fee is determined as provided in 37 CFR 1.134 and 37 CFR 1.550(c).
Failure to file an appeal in an ex parte reexamination proceeding will result in issuance of the reexamination certificate under 37 CFR 1.570.
Appeals to the Board in inter partes reexamination proceedings filed under 35 U.S.C. 311 are governed by 37 CFR 41.60 through 41.81. 37 CFR 41.30 through 41.54 are not applicable to appeals in inter partes reexamination proceedings. See MPEP § 2674 to § 2683 for appeals in inter partes reexamination proceedings.
The use of a separate letter containing the notice of appeal is strongly recommended. Form PTO/SB/31 or Form PTO/AIA/31 may be used for filing a notice of appeal.
Appellant may check the status of the application and the receipt date of the notice of appeal in Patent Center or Private Patent Application Information Retrieval (private-PAIR).
Where the notice of appeal is filed by mail, the Office does not acknowledge receipt by separate letter. However, if a self-addressed postcard is included with the notice of appeal, it will be date stamped and mailed. See MPEP § 503, subsection III.
Notices of appeal are reviewed by the Patent Appeal Center. If a notice of appeal is defective, the Office will notify the applicant of the non-compliance. A notice of appeal is not a proper reply to the last Office action if none of applicant's claims have been twice rejected. A notice of appeal is defective if it was not timely filed within the time period set forth in the last Office action, or the notice of appeal fee set forth in 37 CFR 41.20(b)(1) was not timely filed. Form PTOL-461 (Rev. 9-04 or later), Communication Re: Appeal, should be used to indicate defects in a notice of appeal. This communication is done by the Patent Appeal Center rather than by the examiner. In the rare event that these defects are identified after the notice of appeal is entered, the examiner should contact the Patent Appeal Center to determine the appropriate action to take.
When appellant files an appeal brief without first filing a notice of appeal, the Office treats the appeal brief as a notice of appeal and an appeal brief. For this situation, appellant must file the brief within the time period for reply set forth in the last Office action and the brief must be accompanied by the fees under 37 CFR 41.20(b)(1) and (b)(2) for filing a notice of appeal and an appeal brief in compliance with 37 CFR 41.31 and 41.37. Effective March 19, 2013, the fee for filing an appeal brief in an application or ex parte reexamination was set at $0. For as long as this fee remains at $0, appeal briefs will not be held defective for failure to pay this fee or make any statement about this fee.
When prosecution is reopened after the filing of a notice of appeal and prior to a written decision by the Patent Trial and Appeal Board, appellant must file a new notice of appeal in compliance with 37 CFR 41.31 and a complete new appeal brief in compliance with 37 CFR 41.37 in order to reinstate the appeal. Any previously paid appeal fees set forth in 37 CFR 41.20 for filing a notice of appeal, filing an appeal brief (if any), requesting an oral hearing and/or forwarding the appeal to the Board will not be required to be paid again except if a final Board decision has been made on the first appeal.
If the appeal fees have increased since they were previously paid, then appellant must pay the difference between the current fee(s) and the amount previously paid. Appellant must file a complete new appeal brief in compliance with the format and content requirements of 37 CFR 41.37(c) within two months from the date of filing the new notice of appeal. See MPEP § 1205. This time period is extendible as provided in MPEP § 1205.01.
For example, suppose the applicant files a notice of appeal and two months later applicant files an appeal brief. During the appeal conference, it is decided to reopen prosecution as provided in MPEP § 1207.04 rather than draft an examiner’s answer. If applicant proceeds to file a subsequent appeal by filing a new notice of appeal and appeal brief, applicant would only pay the difference in appeal related fees between the current fees and the amount previously paid. Similarly, if applicant files an RCE after the notice of appeal and a final Board decision is not issued, the applicant would only pay the difference in fees between the current fees and the amount previously paid.
If the appeal results in a written decision, the Office will again require the submission of the fees under 37 CFR 41.20 if a new appeal is later filed. For example, if the Board issues a decision under 37 CFR 41.50(a)(1) affirming a rejection and the appellant does not seek reconsideration or file an appeal, then the decision on the appeal is final, and any subsequent prosecution resulting in a new appeal would require the payment of all appeal fees.
Moreover, if applicant elects to reopen prosecution under 37 CFR 41.50(a)(2)(ii) or 41.50(b)(1) after a decision by the Board, then applicant would have to pay the appeal fees if a new appeal is filed.
If applicant elects to maintain the appeal under 37 CFR 41.50(a)(2)(ii) or request rehearing after a decision under 37 CFR 41.50(a) or (b), the applicant need not pay additional appeal fees. Responding to a requirement for briefing under 37 CFR 41.50(d) or responding to a remand under 37 CFR 41.50(e) would not require payment of additional appeal fees.
Since July of 2005 the Office has provided an ongoing pilot program in which an appellant, upon the filing of a notice of appeal may also request a pre-appeal brief review. See "Pre-Appeal Brief Conference Pilot Program," 1296 OG 67 (July 12, 2005) and "Extension of the Pilot Pre-Appeal Brief Conference Program," 1303 OG 21 (February 7, 2006). This program does not apply to reexamination proceedings. Presenting a request for pre-appeal brief review does not change the fee required to file a notice of appeal and does not require a separate fee. No extensions of time to file the request for review later than the notice of appeal are available.
In order to be proper the applicant must file a notice of appeal in compliance with 37 CFR 41.31. The request for pre-appeal brief review must be filed with the filing of the notice of appeal and before the filing of an appeal brief. Form PTO/AIA/33, "Pre-Appeal Brief Request for Review" may be used for filing the request. The request must be accompanied by arguments in a separate paper entitled, "Pre-Appeal Brief Request for Review". The request, not including Form PTO/AIA/33, may not exceed five (5) total pages and should provide a succinct, concise and focused set of arguments for which the review is being requested. Requests are limited to appealable, not petitionable matters. See MPEP § 1201. An after final amendment may not accompany the request. A request that fails to comply with these requirements should be dismissed.
A pre-appeal brief request that is found not compliant cannot be corrected and resubmitted to cure the reason(s) for non-compliance because the corrected request would not meet the requirement that the notice of appeal and pre-appeal brief request be filed on the same date.
Appellant cannot request withdrawal of a properly-filed notice of appeal for the purpose of requesting a Pre-Appeal Brief Conference and must perfect the appeal by filing the appeal brief within two months of the date of the filing of the notice of appeal under 37 CFR 41.31. However, if the Office reopens prosecution and applicant wishes to reinstate the appeal, applicant may file both a new notice of appeal and a new request for Pre-Appeal Brief Conference on the same date.
Upon receipt of a properly filed request, a supervisor will designate a panel of appropriate reviewers to review the appellant's remarks and the examiner's rejections. The panel will include at least a supervisor and the examiner of record and will have the authority to reopen prosecution if appropriate. The appellant will not be permitted to attend the review and no interviews will be granted prior to issuance of the pre-appeal brief review decision.
After the review is complete, the Office will mail a decision on the status of the application. The decision will state one of the following:
The panel’s review will be terminated if the applicant files any of the following responses after filing a request, but prior to a decision by the appointed panel of examiners assigned to conduct the review.
After a panel decision, the time period for filing an appeal brief will be reset to be one month from the mailing of the decision on the request, or the balance of the two-month time period running from the receipt of the notice of appeal, whichever greater. Further, the time period for filing of the appeal brief is extendible under 37 CFR 1.136.
For as long as this pilot program remains in effect, submission of a pre-appeal review request may extend the period for filing an appeal brief until a decision is made on the request or the request is otherwise dismissed.
As indicated in MPEP § 713.09, one interview after final rejection is normally permitted. Where a notice of appeal is filed in an application or ex parte reexamination, the phrase "after final rejection" includes only the time from the mailing of the final rejection through the filing of an appeal brief. However, as indicated in the notice "Pre-Appeal Brief Conference Pilot Program," 1296 OG 76 (July 12, 2005), no interviews will be granted from the filing of a request for pre-appeal review through issuance of a decision on the request. See MPEP § 1204.02.
Except in unusual situations, no interview is permitted after the appeal brief is filed. See MPEP § 713.05. Where an appeal brief is filed in an application or ex parte reexamination, the phrase "after the appeal brief is filed" includes the time from filing of the appeal brief through the first of a decision by the Board, the mailing by the examiner of a rejection or other paper with a response period, the mailing of a notice of defective appeal brief, or the mailing of a notice of allowance.
Effective March 19, 2013, 37 CFR 41.20(b)(4) sets a fee to forward an appeal to the Board after the mailing of an examiner’s answer. While appellants may desire an interview after mailing of an examiner’s answer and prior to payment of this fee, interviews during this time period are likely to confuse the record on appeal and are not permitted except in unusual situations. These unusual circumstances may include situations where appellant wishes to cancel all appealed claims and proceed to issue with claims previously indicated as allowable, or where the examiner is convinced that some but not all of the previously rejected claims are in condition for allowance.
After the time specified in 37 CFR 41.35(a), the application or ex parte reexamination is no longer under the jurisdiction of the examiner. While the examiner has no jurisdiction over a proceeding after the time set in 37 CFR 41.35(a), the Director of the USPTO or appropriate delegate has the authority to remand the proceeding to the examiner under 37 CFR 41.35(c). Requests for interviews on cases under the jurisdiction of the Board should be granted only with specific approval of the Technology Center Director upon a showing in writing of extraordinary circumstances that justify a remand from the Board to the examiner in order to conduct an interview.
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Evidence means something (including testimony, documents and tangible objects) that tends to prove or disprove the existence of an alleged fact, except that for the purpose of this subpart Evidence does not include dictionaries, which may be cited before the Board.
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Record means the items listed in the content listing of the Image File Wrapper of the official file of the application or reexamination proceeding on appeal or the official file of the Office if other than the Image File Wrapper, excluding amendments, Evidence, and other documents that were not entered. In the case of an issued patent being reissued or reexamined,
