On the 7 months after filing notice of appeal, file the continuation and a request on the application “the authorization to charge for the extension” and the fee. What’s the result? I choose that it is not abandoned.
Is this right?
Q) Notice of Appeal
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{ 10 comments… read them below or add one }
I think it may or may not be abandoned. No appeal brief was filed, so the appeal stands dismissed. (MPEP 1215)
– Any rejected claims are considered withdrawn.
– Any claims objected to as being allowable except for dependency from a rejected claim is considered withdrawn.
– If there were any allowed claims prior to the notice of appeal, the application will be passed to issue as to those allowed claims.
– If there were no allowed claims prior to the notice of appeal, the application will be considered abandoned.
My understanding is that one can file an RCE prior to the 7 month deadline which will act as a withdrawal of the appeal, but I see no mention of a continuation (MPEP 1215.01).
– The RCE must contain a submission, and a an appeal brief or reply brief is not sufficient.
Now, if the application is considered abandoned (no allowable claims) or the appeal dismissed (some allowable claims) because of failure to reply before the 7 month deadline, there is still the possibility of petition for revival. (MPEP 1205.01) The petition is that under 37 CFR 1.137 and a petition fee is required
Also required is one of:
– an RCE with a submission and fee, or
– a Continuing application, or
– a CPA (design), or
– an appeal brief and appeal brief fee (to reinstate the appeal)
So, does anyone know if a continuation is proper on the 7 month deadline of an appeal brief? Doesn’t seem like the PTO would let you have that extra month (or assumably more since the notice of appeal was filed after the last office action). Otherwise anybody wanting to hold-up prosecution in order to file a continuation after 6 months from an office action requiring reply could just timely file a notice of appeal and have until the 7 month deadline (assuming payment of all extension fees).
Scratch that, John White actually says that people use the notice of appeal to do exactly what I was talking about above: to preserve the right to file a continuation outside of the 6 month window. More specifically he said that people file a notice of appeal (in an after-final response) with no actual intent of appealing, but rather they want to keep the application alive until they get a response from the examiner and then will file a continuation.
A brief is required within 2 months of filing the notice of appeal, so just waiting around for 7 months is not an option.
1204 I: “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″
The brief can be filed late if an extension is obtained (up to 5 months extra for a total of 7 months).
37 CFR 12.116: “The appeal will be dismissed unless appellant obtains an extension of time under 37 CFR 1.136(a) and files the required appeal brief fee.”
Extensions of time are not automatic for filing Appeal Briefs.The petition for extension of time for filing the Appeal Brief has to be filed before or at the time the Brief is due. you cant wait until seven months and then ask for a retroactive extension.
I don’t believe that the previous post is entirely correct. 37 CFR 1.136(a)(3) states:
… Submission of the fee set forth in § 1.17(a) will also be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under this paragraph for its timely submission.
According to this the application would not be abandoned if the petition, fee and appeal brief (not applicable in this case because a continuation was requested) were filed 7 months after the notice of appeal.
Big Tex is right. The two month period is just the amount of time you have to file while avoiding extension fees. You have up to 5 extra months after those two months, but you have to pay a fee. And yes, I think you can file on month 7, with 5 months worth of extension fees, and still be fine.
But getting back to the main question, I still think you have to actually file the appeal brief. The statute says you gotta file the appeal brief within 2 months of NOA. Even though that can be extended, the reply (whenever it comes) still has to have an appeal brief, right?. The only thing you’re getting yourself when you pay for extensions of time is more time in which to file the brief. So if the question did, in fact, ask if its ok to file a continuation on the 7 month anniversary, i dont see how you can get around the requirement to file an appeal brief.
Regarding the previous post, I am not totally sure that an appeal brief is needed for the continuation application. It depends rather on what the applicant would like to do.
A continuation must simply be filed while the application is pending (before the expiration of the period for appeal or before abandonment, see 211IIB Claiming the Benefit of Nonprovisional Applications — Copendency) and contain a specific reference to the prior application(s). This will in effect create a new application whether or not the original application is abandoned or not. The original application is then either abandoned if the appeal brief is not filed and no claims are allowable or, if certain claims have been allowed, those claims will issue.
More information is needed but I suspect this was not a continuation question but rather, as tttgas hinted at above, a RCE question, which is handled in much the same manner. A RCE, like a continuation application, must be filed before the abandonment of the application. The request to charge fees for the extension of time will keep the application from being abandoned. A RCE will then be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner. In order for the RCE to be effective, it must include both a petition under 37 CFR 1.114(c) (this includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability but not simply an appeal brief 1.114(d)) and the required fee in 1.17(e). A petition does not appear to be submitted in the question and once again depending on whether allowed claims exist in the application, the application could go abandoned.
A question where appeal is filed in parent application A following final rejection but no brief is filed, and a continuation B is filed one day before the seven months to file brief in parent A expires.
Nothing filed in A (extension of time etc) but cover letter for B says “Commissioner is authorized to deduct any fees etc including necessary to make parent application A copending” Question was that is status of B?
a) Copending because filed before notice of abandonment mailed in application A
b) Abandoned because it should have been addressed to “Director” and not “Commisioner”
c) Abandoned because separate applications require separate papers, and therefore request for extension in B cover letter didn’t extend A to make copending
d) Copending if an automatic extension is filed in A before seven months expires
e) abandoned because of some other odd ~~~
I think this is the question and i am still not sure about answer. Any comment?
I got two or three Appeal questions.
For a couple, the examiner rejects twice, the app goes to the Board. The Board affirms the rejection and also adds a new rejection to it.
What can the 1) applicant do and
2) examiner do?
The answer choice for 1)
1214 I:
If the rejection under 37 CFR *>41.50(b)41.50(b)< rejection and may not include the affirmed rejection.
I forget the answer choice for 2.