Process of Appeal
Notice of Appeal (claims 2x rejected) - fee
Appeal Brief
Examiner’s Answer
Reply Brief - fee
Request for Oral Hearing
Decision of Board
Appeal to CAFC - fee
Request for Rehearing
Appeal Brief
Must be filed within 2 months of the date of Notice of Appeal is received by the PTO.
Time period is automatically extendable up to additional 5 months
What must the Appeal Brief set forth?
- Identification of the real party. Members of the Board have to know this to determine conflicts.
- Related appeals and interferences. Assume none if not listed. Listing criteria:
(a) Same owner
(b) be known to appellant
(c) related to or be affected by the Board Decision in this case - Summary of the claimed subject matter of each independent and dependent claim separately argued
- Arguments directed to each and every rejection w/ separate headings for each
- And appendix containing a copy of the claims appealed
New grounds of rejection in Examiner’s Answer
- reopen prosecution and respond to any other action
- ask that the appeal to be maintained and respond to the new rejection by filing reply brief.
Non-Designated new grounds of rejection in Examiner’s Answer
- Applicant can file petition with fee under Rule 181 to formally designate the new ground.
This enables applicant to reopen prosecution.
- Applicant can also just submit arguments. No petitions is needed. Just submit a Reply Brief.
Board Decision
- Affirm
- Reverse
- Remand (for further consideration of a rejection, further search, or to consider an amendment).
- Issue a statement - new ground of rejection
(a) submit amendment or have the Examiner reconsider
(b) Applicant can have the new rejection reconsider by the Board
if new ground of rejection is not labeled, Applicant can request for rehearing to have it designated.
Withdrawing Appeal
- With claims allowed, that’s fine
- Without claims allowed, abandonment.
Board decision
- Examiner Affirmed
(a) Request a rehearing within 2 mo.
(b) Appeal to CAFC or District Court - New ground of rejection
(a) respond and have examiner consider
(b) request rehearing and address the new rejection.
Jurisdiction over Appeal
Rule 41.35 Jurisdiction over the proceeding passes to the Board upon the filing of a reply brief under § 41.41 or the expiration of the time in which to file such a reply brief, whichever is earlier.
End of jurisdiction of the Board
Rule 41.35
(1) The Director or the Board enters a remand order (see §§ 41.35(c), 41.35(e), and 41.50(a)(1)),
(2) The Board enters a final decision (see § 41.2) and judicial review is sought or the time for seeking judicial review has expired,
(3) An express abandonment which complies with § 1.138 of this title is recognized,
(4) A request for continued examination is filed which complies with § 1.114 of this title,
(5) Appellant fails to take any required action under §§ 41.39(b), 41.50(a)(2), 41.50(b), or 41.50(d), and the Board enters an order of dismissal, or
(6) Appellant reopens prosecution pursuant to § 41.40(b) or in response to a new ground of rejection entered in a decision of the Board (see § 41.50(b)(1)).
