1208 Reply Briefs and Fee for Forwarding Appeal [R-11.2013]
37 CFR 41.40 Tolling of time period to file a reply brief.
- (a) Timing. Any request to seek review of the primary examiner’s failure to designate a rejection as a new ground of rejection in an examiner’s answer must be by way of a petition to the Director under § 1.181 of this title filed within two months from the entry of the examiner’s answer and before the filing of any reply brief. Failure of appellant to timely file such a petition will constitute a waiver of any arguments that a rejection must be designated as a new ground of rejection.
- (b) Petition granted and prosecution reopened. A decision granting a petition under § 1.181 to designate a new ground of rejection in an examiner’s answer will provide a two-month time period in which appellant must file a reply under § 1.111 of this title to reopen the prosecution before the primary examiner. On failure to timely file a reply under § 1.111, the appeal will stand dismissed.
- (c) Petition not granted and appeal maintained. A decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner’s answer will provide a two-month time period in which appellant may file only a single reply brief under § 41.41.
- (d) Withdrawal of petition and appeal maintained. If a reply brief under § 41.41 is filed within two months from the date of the examiner’s answer and on or after the filing of a petition under § 1.181 to designate a new ground of rejection in an examiner’s answer, but before a decision on the petition, the reply brief will be treated as a request to withdraw the petition and to maintain the appeal.
- (e) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
37 CFR 41.41 Reply brief.
- (a) Timing. Appellant may file only a single reply brief to an examiner's answer within the later of two months from the date of either the examiner's answer, or a decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner's answer.
- (b) Content.
- (1) A reply brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence. See § 37 CFR 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.33 for amendments, affidavits or other Evidence filed after the date of filing the appeal.
- (2) Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown.
- (c) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
Under 37 CFR 41.41(a)(1), appellant may file a single reply brief as a matter of right within the later of two months from the date of either the examiner’s answer, or a decision refusing to grant a petition under 37 CFR 1.181 to designate a new ground of rejection in an examiner’s answer. Extensions of time to file the reply brief may be granted pursuant to 37 CFR 1.136(b) (for patent applications) or 1.550(c) (for ex parte reexamination proceedings). Extensions of time under 37 CFR 1.136(a) are not permitted. Normally, appellant is not required to file a reply brief to respond to an examiner’s answer, and if appellant does not file a reply brief within the two month period of time, the application will be forwarded to the Board for decision on the appeal. In response to the following, however, appellant is required to file either a reply brief to maintain the appeal or a reply under 37 CFR 1.111 to reopen prosecution:
- (A) An examiner’s answer that designates a new ground of rejection pursuant to 37 CFR 41.39 (see MPEP § 1207.03); or
- (B) A substitute examiner’s answer responding to a remand by the Board for further consideration of a rejection pursuant to 37 CFR 41.50(a) (see MPEP § 1207.05). Such a substitute examiner’s answer may contain a new ground of rejection (also see MPEP § 1207.03).
If appellant requests that the appeal be maintained in response to a new ground of rejection made in an examiner’s answer or a substitute examiner’s answer, the appellant must file a reply brief to address each new ground of rejection set forth in the answer in compliance with 37 CFR 41.37(c)(1)(iv) within two months from the mailing of the answer. The reply brief should include the following items, with each item starting on a separate page, so as to follow the other requirements of a brief as set forth in 37 CFR 41.37(c):
- (A) Identification page setting forth the appellant’s name(s), the application number, the filing date of the application, the title of the invention, the name of the examiner, the art unit of the examiner and the title of the paper (i.e., Reply Brief);
- (B) Argument page(s).
New or non-admitted affidavits, and/or other evidence are not permitted in a reply brief. Any new amendment must be submitted in papers separate from the reply brief, and the entry of such papers is subject to the provisions of 37 CFR 41.33. A paper that contains an amendment is not a reply brief within the meaning of 37 CFR 41.41. Such a paper will not be entitled to entry simply because it is characterized as a reply brief.
If a reply brief is filed in response to a substitute examiner’s answer under 37 CFR 41.50(a) that was written in response to a remand by the Board for further consideration of a rejection, any reply brief accompanied by an amendment, affidavit or other evidence will be treated as a request that prosecution be reopened before the examiner. If appellant fails to file a reply brief or a reply under 37 CFR 1.111 within two months from the mailing of the examiner’s answer that contains a new ground of rejection, or a substitute examiner’s answer under 37 CFR 41.50(a), the appeal may be dismissed. See MPEP § 1207.03 and § 1207.05.
II. EXAMINER’S RESPONSE TO A REPLY BRIEFAfter receipt of a reply brief under 37 CFR 41.41, jurisdiction over the appeal passes to the Board. Normally, the examiner does not need to acknowledge the reply brief and will not have an opportunity for further argument prior to a decision by the Board. However, the Board may remand the appeal to the examiner to furnish a substitute examiner’s answer responsive to the remand.
1208.01 Fee for Forwarding an Appeal to the Board [R-07.2022]
37 CFR 41.45 Appeal forwarding fee
- (a) Timing. Appellant in an application or ex parte reexamination proceeding must pay the fee set forth in § 37 CFR 41.20(b)(4) within the later of two months from the date of either the examiner's answer, or a decision refusing to grant a petition under § 1.181 of this chapter to designate a new ground of rejection in an examiner's answer.
- (b) Failure to pay appeal forwarding fee. On failure to pay the fee set forth in § 37 CFR 41.20(b)(4) within the period specified in paragraph (a) of this section, the appeal will stand dismissed.
- (c) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
The examiner's answer should provide notice that the appeal forwarding fee must be paid within the requisite time period or the appeal will stand dismissed. See form paragraphs 12.279 and 12.279.01. It is preferable that appellants pay this fee at the same time any reply brief is filed.
Effective March 19, 2013, the fee for filing an appeal brief in an application or ex parte reexamination was reduced to $0 and a new fee was added for forwarding the appeal to the Board after the mailing of an examiner's answer. Failure to pay this appeal forwarding fee results in the dismissal of the appeal. In the event that appellant fails to timely pay the fee, the appeal is dismissed by rule and the examiner should proceed as indicated in MPEP § 1215 regardless of whether a separate paper is mailed dismissing the appeal. The requirement to pay the appeal forwarding fee is waived when the appeal brief fee was paid before March 19, 2013. As long as the waiver is in effect, applicants having paid the appeal brief fee before March 19, 2013 will not be required to pay the appeal forwarding fee. This waiver only applied in an appeal in which the appeal brief and its corresponding appeal brief fee were filed before March 19, 2013 and where applicant seeks to reinstate an appeal in such application prior to the Board issuing a decision on the appeal filed prior to March 19, 2013.
The appeal forwarding fee is premature if the fee is filed prior to the mailing of the examiner’s answer. In addition, the Office cannot accept a general authorization to pay the appeal forwarding fee because appeal fees are found in 37 CFR 41.20 and not 37 CFR 1.16 to 1.18. See 37 CFR 1.25(b). Applicant should be clear in its authorization that the fee is directed to payment of the appeal forwarding fee. It is suggested that the applicant consider filing form PTO/AIA/34 (Certification and Transmittal of Appeal Forwarding Fee). An applicant who files a reply brief and authorizes the Office to charge any fees related to the submission of this paper will not have authorized the Office to charge the appeal forwarding fee because the submission of the reply brief and submission of the appeal forward fee are not required to be submitted at the same time.
As an example, suppose the applicant filed an appeal brief, including payment of the appeal brief fee, on March 18, 2013 and a final Board decision issued in the appeal on March 16, 2015. Following the Board decision the applicant timely files a request for continued examination under 37 CFR 1.114 on May 17, 2015. After prosecution of the RCE before the examiner, the applicant files a new notice of appeal and an appeal brief. The applicant would be required to pay the appeal forwarding fee within the period specified in 37 CFR 41.45(a) to continue with the appeal.
The appeal forwarding fee does not apply to inter partes reexamination appeals.
