1204 Notice of Appeal [R-01.2024]
35 U.S.C. 134 Appeal to the Patent Trial and Appeal Board.
- (a) PATENT APPLICANT.— An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal.
- (b) PATENT OWNER.— A patent owner in a reexamination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal.
35 U.S.C. 41 Patent fees; patent and trademark search systems
- (a) GENERAL FEES. — The Director shall charge the following fees:
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- (6) APPEAL FEES. —
- (A) On filing an appeal from the examiner to the Patent Trial and Appeal Board, $540.
- (B) In addition, on filing a brief in support of the appeal, $540, and on requesting an oral hearing in the appeal before the Patent Trial and Appeal Board, $1,080.
- An additional fee for forwarding an appeal to the Board after Examiner's Answer is set at 37 CFR 41.20(b)(4).
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37 CFR 41.31 Appeal to Board.
- (a) Who may appeal and how to file an appeal An appeal is taken to
the Board by filing a notice of appeal.
- (1) Every applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply.
- (2) Every owner of a patent under ex parte reexamination filed under § 1.510 of this title before November 29, 1999, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply.
- (3) Every owner of a patent under ex parte reexamination filed under § 1.510 of this title on or after November 29, 1999, any of whose claims has been finally (§ 1.113 of this title) rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply.
- (b) The signature requirements of §§ 1.33 and 11.18(a) of this title do not apply to a notice of appeal filed under this section.
- (c) An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office. Questions relating to matters not affecting the merits of the invention may be required to be settled before an appeal can be considered.
- (d) The time periods set forth in paragraphs (a)(1) through (a)(3) of this section are extendable under the provisions of § 1.136 of this title for patent applications and § 1.550(c) of this title for ex parte reexamination proceedings.
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.
II. APPEAL BY PATENT APPLICANTUnder 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 nonstatutory 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 nonstatutory 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.
III. APPEAL BY PATENT OWNER37 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/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.
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.
V. DEFECTIVE NOTICE OF APPEALNotices 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.
1204.01 Reinstatement of Appeal [R-07.2022]
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.
1204.02 Pre-Appeal Brief Review Request and Conference Pilot Program [R-01.2024]
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. Any amendment pursuant to 37 CFR 1.116 that is filed on the same day as the Pre-Appeal Brief Conference Request, regardless of whether the amendment is filed together with the notice of appeal and request or in a separate submission, will be considered to accompany the request. Therefore, such a request will not meet the content requirements of the Pilot program. A request that fails to comply with these requirements should be dismissed.
If applicant files a notice of appeal, a Pre-Appeal Brief Conference Request, and an RCE all on the same date, the RCE will control. A notice of appeal cannot be entered into an application with an RCE until the application is under rejection, even if such application has been twice rejected prior to the RCE submission. Accordingly, the notice of appeal or the Pre-Appeal Brief Conference Request will not be considered. Applicant further cannot file a notice of appeal in the application until the application is under rejection. See MPEP § 1204, subsection II.
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:
- (A) The application remains under appeal because there is at least one actual issue for appeal.
- (B) Prosecution on the merits is reopened and an appropriate Office communication will follow in due course. In appropriate circumstances, a proposed amendment may accompany the panel’s decision proposing changes that, if accepted, may result in an indication of allowability for the contested claim(s).
- (C) The application is allowed on the existing claims and prosecution remains closed.
- (D) The request fails to comply with the submission requirements and is dismissed.
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.
- (A) An appeal brief.
- (B) A request for continued examination.
- (C) An after final amendment.
- (D) An affidavit or other evidence.
- (E) An express abandonment.
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.
1204.03 Interviews After Notice of Appeal [R-11.2013]
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.
1204.04 Official Record on Appeal [R-01.2024]
37 CFR 41.30 Definitions.
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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, the Record further includes the Record of the patent being reissued or reexamined.
The official record on appeal contains the items listed in the content listing of the Image File Wrapper or the official file of the Office if other than the Image File Wrapper, excluding any amendments, evidence, or other documents that were not entered or indicated considered by the examiner. Because an examiner’s refusal to enter an amendment, evidence, or other document is a petitionable matter that is not subject to review by the Board, the exclusion of such non-entered documents from the definition of "Record" reflects the fact that the Board’s review of patentability determinations is properly based on the record of all entered and indicated considered documents in the file.
An information disclosure statement or petition that is held in abeyance while the Board possesses jurisdiction over the proceeding is not an entered or indicated considered document and therefore is excluded from the definition of "Record" until such time as it is entered or indicated to have been considered.
The definition of "Record" includes the items listed in the content listing of the Image File Wrapper because, in some cases, physical items that form part of the official file are not able to be scanned into the Image File Wrapper and are maintained elsewhere, such as in an artifact file. Some examples of such items include original drawings in design patent applications and sequence listings. In such cases, the Image File Wrapper will include an entry in the content listing that points to this artifact file or other record.
In the case of an issued patent being reissued or reexamined, the Record further includes the Record of the patent being reissued or reexamined.
All references listed on an Information Disclosure Statement (i.e., Form PTO/SB/08), which have been indicated as having been considered by the examiner, or listed on a form PTO-892 are included in the definition of Record even if each of the so listed references does not separately appear in the content listing of the Image File Wrapper.
For the purposes of appeal, "Evidence" does not encompass dictionaries. Excluding dictionaries from the definition of "Evidence" thus allows appellants to refer to dictionaries in their briefs, which would otherwise be precluded under 37 CFR 41.33(d)(2) (absent existence of one of the enumerated exceptions). It further allows examiners to refer to dictionaries in the examiner’s answers without automatically rendering a rejection a new ground under 37 CFR 41.39(a)(2). Treating dictionaries in this manner is consistent with Supreme Court and Federal Circuit precedent, which contemplate that such materials may be consulted by tribunals "at any time." See, e.g., Nix v. Hedden, 149 U.S. 304, 307 (1893) (citations omitted) (admitting dictionaries to understand the ordinary meaning of terms "not as evidence, but only as aids to the memory and understanding of the court"); Phillips v. AWH Corp., 415 F.3d 1303, 1322–23, 75 USPQ2d 1321, 1333 (Fed. Cir. 2005) (en banc) ("[J]udges are free to consult dictionaries and technical treatises at any time in order to better understand the underlying technology and may also rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents.") (citation omitted); In re Boon, 439 F.2d 724, 727–28, 169 USPQ 231, 234 (CCPA 1971) (holding citation to dictionary was not tantamount to the assertion of a new ground of rejection "where such a reference is a standard work, cited only to support a fact judicially noticed and, as here, the fact so noticed plays a minor role, serving only to fill in the gaps which might exist in the evidentiary showing made by the Examiner to support a particular ground for rejection." (emphasis and internal quotations omitted)). Thus, 37 CFR 41.30 permits both the applicant and examiner to submit them to the Board during the briefing stage.
