Q) Time for Filing an Appeal Brief (4.03.39a)

by admin on April 10, 2010 · 47 comments

in Exam Questions

Question #39  from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.

39. Applicant received a Final Rejection with a mail date of Tuesday, February 29, 2000. The Final Rejection set a 3 month shortened statutory period for reply. Applicant files an Amendment and a Notice of Appeal on Monday, March 27, 2000. The examiner indicates in an Advisory Action that the Amendment will be entered for appeal purposes, and how the individual rejection(s) set forth in the final Office action will be used to reject any added or amended claim(s). The mail date of the examiner’s Advisory Action is Wednesday, May 31, 2000. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following dates is the last date for filing a Brief on Appeal without an extension of time?
(A) Saturday, May 27, 2000.
(B) Monday, May 29, 2000 (a Federal holiday, Memorial Day).
(C) Tuesday, May 30, 2000.
(D) Wednesday, May 31, 2000.
(E) Tuesday, August 29, 2000.


ANSWER: (D). MPEP § 710.02(e), under the heading “Final Rejection – Time For Reply” states, “If an applicant initially replies within 2 months from the date of mailing of any final rejection setting a 3-month shortened statutory period for reply and the Office does not mail an advisory action until after the end of the 3-month shortened statutory period, the period for reply for purposes of determining the amount of any extension fee will be the date on which the Office mails the Advisory Action advising applicant of the status of the application…” Hence, since no extension fee was paid in the fact pattern, the time allowed applicant for reply to the action from which the appeal was taken is the mail date of the Advisory Action, i.e., May 31, 2000. 37 CFR § 1.192(a) recites, in pertinent part, “Appellant must, within two months from the date of thenotice of appeal under § 1.191 or within the time allowed for reply to the action from which the appeal was taken, if such time is later, file a brief in triplicate.” (A), (B), and (C) are wrong because they recite dates which are earlier than May 31, 2000, the last date for filing a Brief without an extension of time. (E) is wrong because it is after the last date for filing a Brief without an extension of time, and therefore an extension of time would be required.

{ 47 comments… read them below or add one }

1 wilifeNo Gravatar April 23, 2010 at 7:28 pm

Why the answer is not C? C is two months after submission of Notice of Appeal.

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2 EricNo Gravatar April 24, 2010 at 3:49 pm

I also don’t understand why the answer isn’t C. This is from 1205.01, and it seems to contradict the answer given above:

37 CFR 41.37(a) does not permit the brief to be filed within the time allowed for reply to the action from which the appeal was taken even if such time is later. Once appellant timely files a notice of appeal in compliance with 37 CFR 41.31, the time period for reply set forth in the last Office action is tolled and is no longer relevant for the time period for filing an appeal brief. For example, if appellant filed a notice of appeal within one month from the mailing of a final Office action which sets forth a 3-month shortened statutory period for reply, and then the appellant filed an appeal brief after 2 months from the filing date of the notice of appeal but within 3 months from the mailing of the final action, a petition for an extension of time for one month would be required. Similarly, if the appellant files an amendment or a request for continued examination (RCE) under 37 CFR 1.114, instead of an appeal brief, after 2 months from the filing date of the notice of appeal but within 3 months from the mailing of the final action, the petition for an extension of time would be required.

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3 EricNo Gravatar April 24, 2010 at 3:57 pm

I’m pretty sure that C is now the correct answer. The explanation above points to Rule 192, however, this Rule was removed in 2004 (the exam was 2003).

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4 wilifeNo Gravatar April 26, 2010 at 5:28 pm

I agree with Eric.

Below is from MPEP eighth edition Revision 1

1206
37 CFR 1.192. Appellant’s brief.
(a) Appellant must, within two months from the date of the notice of appeal under § 1.191 or within the time allowed for reply to the action from which the appeal was taken, if such time is later, file a brief in triplicate. The brief must be accompanied by the fee set forth in § 1.17(c) and must set forth the authorities and arguments on which appellant will rely to maintain the appeal. Any arguments or authorities not included in the brief will be refused consideration by the Board of Patent Appeals and Interferences, unless good cause is shown.

“within the time allowed for reply to the action from which the appeal was taken” is removed in Rev. 4.

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5 RofelNo Gravatar April 28, 2010 at 11:05 am

I agree with Eric’s answer C right now (i.e., 37CFR192 is governed by part 41 of the Rules). Thanks! (I will try to delete my blog below OR it might help readers on the other hand)

6 RofelNo Gravatar April 25, 2010 at 10:28 am

@Eric. here is my own opinion. the phrase “the time period for reply set forth in the last Office Action is tolled and is no longer relevant for the period for filing an appeal brief” should still be read in view of activating “two-month rule.” In your given example, the “two-month rule” is not applied; however, in the question #39 includes “amendments will be entered…”

Because the facts of the question #39 include “amendments,” which are pressumed to be acceptable amendments for Appeal, then the “Two-month rule” can still be applied. Hence, D is still a good choice.

I would like to thank this site and to thank it again when I pass the Patent Bar next month God willing. :)

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7 RofelNo Gravatar April 25, 2010 at 10:55 am

(Further clarification in my first blog on this site!). What I am trying to derive is that the facts of question #39 include valid application of “two-month rule” vis a vis “date of advisory opinion.” The “amendments will be entered…” is a valid basis for mailing or application of the “advisory opinion.” Hence, D will be a good answer for me.

The quotation “37 CFR 41.37(a) does not permit….” is correct and valid UNTIL the facts of question #39 added “amendments will be entered….” At this point, the answer should adjust to letter “D.”

The above is only my humble opinion and I hope that it made some sense to a certain degree.

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8 VinNo Gravatar July 9, 2010 at 8:05 pm

The excursion on amendments above is off. The Answer as said is C. Focus on 1205.01 and particularly the text following “For example, …” in Eric’s quote of 1205.01.

Dear Mypatentbar,
You may want to edit this model Answer and the chain.

Best,

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9 SusanNo Gravatar July 12, 2010 at 10:05 pm

I agree it’s answer C. The answer provided for the April 2003 is correct for the MPEP procedures then in effect, but we need to be careful in applying the new MPEP to the question. See MPEP 1205.01/REV 4. This is why merely memorizing the answers to old test questions from before the new MPEP revision could result in wrong answers.

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10 PCTmasterNo Gravatar July 17, 2010 at 10:54 pm

I have a question – if anybody can confirm what I have this correct, that would be much appreciated. This is what I’ve concluded:

1) The 2 month rule per § 710.02(e) (variable SSP) is in effect after Final Rejection – accept this fact and don’t consider the issue of an appeal at this point. I.e. if you file an amendment putting your claims in allowance or a RCE before 2 months, the SSP = the later of: 3 months or date of Advisory Action. And you can still file your amendment or RCE after the SSP, but with fee. But never to exceed statutory 6 months.

2) Now if you file a Notice of Appeal, according to 1205.01, whatever the SSP was is no longer relevant for the period for filing an appeal brief (or RCE or amendment). You have 2 months to do it for free and without a petition. But again never to exceed 6 months.

So if you have file an amendment a week after final rejection and another one 4 months after final rejection – you could still do it for free if the Advisory Action gets mailed out to you 5 months after rejection.

But if you file an amendment AND a Notice of Appeal a week after final rejection, the old SSP is forgotten – we don’t even need to consider when the Advisory Action gets sent to you.

Everything look right? JEEZ, it took me an hour to figure this out. So it looks like (D) is no longer the correct answer.

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11 BradNo Gravatar December 17, 2012 at 5:59 pm

Looks good except that you have 2 months two file appeal brief plus optional 5 month paid extension, for a total of seven months to file appeal brief from notice of appeal.

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12 StephenNo Gravatar August 12, 2010 at 6:01 pm

I agree the answer should be C according to the current MPEP. However, how can we be certain the USPTO has caught this subtle change? They have so many repeats I wouldn’t be surprised to find out that this is still counted as the correct answser on the exam. Can anyone offer their insight? I think I may just assume D is still the correct answer for exam purposes….I’ve been reading from multiple peoples’ posts on this site that in some cases, such as when two answers are counted as correct in the “answer explanation” sections for the old exams, the actual exam will only give credit for one of the correct answers. This indicates to me that the USPTO is not keeping up with the current changes, at least not in the actual prometric testing system.

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13 CassidyNo Gravatar October 7, 2010 at 2:07 pm

The two month clock runs from when the notice of appeal is received, not mailed (unless Express Mail). Question doesn’t state when received.

MPEP 1205:
The usual period of time in which appellant must file his or her brief is 2 months from the date of appeal. The Office date of receipt of the notice of appeal (and not the date indicated on any Certificate of Mailing under 37 CFR 1.8) is the date from which this 2-month time period is measured. See MPEP § 512.

Unless express mail is used.

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14 lanceNo Gravatar October 7, 2010 at 5:26 pm

Answer is D and there’s another old exam question that tests the same concept, but keeps the question simpler: Can’t recall the exact question, but it simply asks, if applicant replies within 2 months of the reply period, and PTO issued advisory action after the 3 month period, then the date for reply for the purposes of calculating extension fees is the date the advisory action is mailed. This is also in the study guide as well.

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15 LawrenceNo Gravatar December 10, 2010 at 6:58 pm

I believe the correct answer according to current MPEP procedure is C as well, not D. Eric cited the exact relevant portion of the MPEP. Lance, your analysis ignores the fact that a notice of appeal has been filed, which according to 1205.01, makes the previously set period for replying to the office action irrelevant.

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16 DNo Gravatar December 12, 2010 at 12:36 pm

FYI- this question appeared as Question #8 from the April 2000 (AM) patent bar exam also (repeated in April 2003).

As Cassidy mentioned above, the appeal 2 month period begins when the notice is *received* at the PTO. This receive date is not provided which leads me to believe that the focus of the question is about the 2 month rule (not the appeal 2 month time period).

I think the question would be more clear if they asked about the last day the applicant needed to submit his complete answer to the final rejection without an extension of time. Although making questions clear is likely not a high priority for the PTO (bangs head against wall).

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17 DNo Gravatar December 12, 2010 at 12:38 pm

BTW- I think the answer is D under the 2 month rule (we don’t have enough info to know when the appeal 2 month period ends).

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18 LawrenceNo Gravatar December 12, 2010 at 10:02 pm

I agree with you and Cassidy that there is no indication of the when the notice of appeal was actually received by the USPTO. But I disagree that this makes D the correct answer. As mentioned in the comments above, the previous exam questions (and answers) were written before revision 4. After revision 4, an appeal BRIEF is due 2 months from (USPTO receipt of) a notice of appeal, with the extension provisions of the 2 month-rule/advisory action no longer relevant.

Prior to Revision 4, application of the 2 month/advisory action rule would indeed make (D) the right choice, but as of right now, the 2 month rule is inapplicable to the time limit to file an appeal brief.

19 DaveNo Gravatar January 30, 2011 at 12:49 am

The answer is D under the current MPEP. See the section 706.07(f)(A) on advisory actions.

“(A) All final rejections setting a 3-month shortened statutory period (SSP) for reply should contain one of form paragraphs … advising applicant that if the reply is filed within 2 months of the date of the final Office action, the shortened statutory period will expire at 3 months from the date of the final rejection or on the date the advisory action is mailed, whichever is later.”

The applicant filed the amendment within 2 months of the OA, so the latest date he can file WITHOUT extension is the end of the 3 months originally prescribed by the OA (the 27th) or the mailing date of the AA (the 31st), WHICHEVER IS LATER.

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20 DaveNo Gravatar January 30, 2011 at 1:05 am

Looking further into it, under [R-8], the above answer is NOT correct BECAUSE the NOA was filed with the amendment. There’s a close example in 1205.01 paragraph 3:

“37 CFR 41.37(a) does not permit the brief to be filed within the time allowed for reply to the action from which the appeal was taken even if such time is later. Once appellant timely files a notice of appeal in compliance with 37 CFR 41.31, the time period for reply set forth in the last Office action is tolled and is no longer relevant for the time period for filing an appeal brief. For example, if appellant filed a notice of appeal within one month from the mailing of a final Office action which sets forth a 3-month shortened statutory period for reply, and then the appellant filed an appeal brief after 2 months from the filing date of the notice of appeal but within 3 months from the mailing of the final action, a petition for an extension of time for one month would be required. Similarly, if the appellant files an amendment or a request for continued examination (RCE) under 37 CFR 1.114, instead of an appeal brief, after 2 months from the filing date of the notice of appeal but within 3 months from the mailing of the final action, the petition for an extension of time would be required.”

This suggests that the answer would be based on the NOA date of receipt rule of 1205.01 paragraph 2.

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21 CNo Gravatar February 20, 2011 at 1:03 pm

I have been concerned about this question since the law has apparently changed and the PTO does not seem to care.

That said, I found this:
“If the notice of appeal is filed before September 13, 2004, the time period for filing an appeal brief will be the time period set forth in former § 1.192(a) which provides that the appellant must file an appeal brief: (1) within two months from the date of filing of the notice of appeal;
or (2) within the time allowed for reply to the action from which the appeal was taken, if such time is later.”
http://www.uspto.gov/ip/boards/bpai/procedures/og/bpai91304.pdf

This seems to suggest that as long in the dates in the question have not changed, that answer choice (D) would still be correct. Any thoughts?

[Xposted to the other page this question appears on]

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22 LMNo Gravatar March 22, 2011 at 8:08 pm

Per written by C – then the answer choice would be (D) as the applicaiton is filed before 2004 as given in the question facts.

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23 LMNo Gravatar March 22, 2011 at 8:10 pm

Sorry, Notice of Appeal is filed before 2004 and therefore could be answer (D).

24 DNo Gravatar March 22, 2011 at 3:04 pm

I tend to agree with Lawrence that the answer is C. With the current emphasis on 1200, if we assume 3/27/2000 is the date the PTO receives the NOA, the 2 month time period from NOA to appeal brief due date leads to 5/30/2000.

On the other hand, if I see this question on the exam verbatim with the same dates, I would probably put D as my answer.

Has anyone checked answers at the PTO lately to see if that is still the correct answer?

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25 LMNo Gravatar March 22, 2011 at 5:42 pm

As per Exam Analysis by John M. White:

39. Tricky, tricky, tricky. The due date is the later of the remaining time of three months from February 29, 2000, or two months from March 27, 2000, or the mailing day of the Advisory (May 31, 2000) since you are using the “two month” rule in “after final” practice. The latest date is……..May 31, 2000. Answer D).

Can anyone throw light on it.

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26 DNo Gravatar March 22, 2011 at 6:32 pm

Do you know how recent JW wrote this? How old is your version of the PLI info?

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27 LMNo Gravatar March 22, 2011 at 7:54 pm

Do not know. It is available now too on PLI website.
I downloaded two weeks ago.

28 joNo Gravatar October 25, 2011 at 9:29 am

MPEP 1205.01 “37 CFR 41.37(a) does not permit the brief to be filed within the time allowed for reply to the action from which the appeal was taken even if such time is later. Once appellant timely files a notice of appeal in compliance with 37 CFR 41.31, the time period for reply set forth in the last Office action is tolled and is no longer relevant for the time period for filing an appeal brief. “

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29 DBNo Gravatar April 30, 2011 at 5:08 pm

This is my interpretation.
appeal brief needs to be filed within 2 months without fee and automatic 5 month extension with fee. Now, May 29th is 2 month period from notice of appeal and no fee involved if appeal brief filed by then. However, appeal brief can be filed anytime before oct 27th with extension and fees. But because of 2 month rule, fees for extension of time will be computed from the date advisory is mailed. So in this case, appeal brief can be submitted on May 31st without incurring any fees because of 2 month rule. question is by when appeal brief can be submitted “without fees”. And May 31st is the latest when no fee is involved even though it comes in day late from 2 month time limit for filing appeal brief as no fee will be charged due to two month rule.

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30 BeNiceNo Gravatar May 11, 2011 at 6:07 pm

Appellant must, within
(a) two months from the date of thenotice of appeal under § 1.191 or
(b) within the time allowed for reply to the action from which the appeal was taken,
if such time is later, file a brief in triplicate.

(b) is later in this case.

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31 BigBadVoodoDaddyNo Gravatar June 21, 2011 at 2:33 pm

Benice – 1.191 is quite misleading, all appeals fall under rule 41. I suspect you are looking at a really old version.

DB – The reasoning for the 2 month rule that you use, does not apply – if you see the specific examples quoted in 1205 – you will find that an extension of time is required.

Also – for all those people quoting a prior-to-2004 date for the rules of appeal. That is correct and quoted in chapter 1200 (Sep 13, 2004 is the right date of the cutoff between the time periods applicability) Please note – only the current edition of the MPEP is used – so in general I would use 2 months from notice of appeal as a rule of thumb (barring some dated or weird fact pattern from prior to 2004) It looks like nobody is reporting this as repeated of late, so as of now the discussion should really be date independent in view of the latest version – meaning the 2 month from NOA should apply as a rule.
thanks – my 2 cents

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32 SolNo Gravatar April 1, 2012 at 2:57 am

To this date, C is the correct answer under R8. 2 months’ rule no longer applies to filing appeal brief.

“37 CFR 41.37(a) does not permit the brief to be filed within the time allowed for reply to the action from which the appeal was taken even if such time is later. Once appellant timely files a notice of appeal in compliance with 37 CFR 41.31, the time period for reply set forth in the last Office action is tolled and is no longer relevant for the time period for filing an appeal brief. For example, if appellant filed a notice of appeal within one month from the mailing of a final Office action which sets forth a 3-month shortened statutory period for reply, and then the appellant filed an appeal brief after 2 months from the filing date of the notice of appeal but within 3 months from the mailing of the final action, a petition for an extension of time for one month would be required. Similarly, if the appellant files an amendment or a request for continued examination (RCE) under 37 CFR 1.114, instead of an appeal brief, after 2 months from the filing date of the notice of appeal but within 3 months from the mailing of the final action, the petition for an extension of time would be required.

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33 GDBNo Gravatar April 14, 2012 at 6:56 pm

Someone posted the below about this question:

BillNo Gravatar February 8, 2011 at 10:59 pm

I missed the exam by 1 question and so I reviewed my test at the PTO. The correct answer was “D”

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34 zanNo Gravatar April 14, 2012 at 9:03 pm

I also thought the correct answer was C but after reading all these responses, I’m really confused. What is the correct answer nowadays and why? thanks!

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35 GDBNo Gravatar April 15, 2012 at 11:27 am

I’m not sure! I don’t know what to do if I get this on the exam

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36 SabrinaNo Gravatar April 23, 2012 at 12:55 pm

If the question still uses the 2000 dates, I would go with D because I think the rule in effect at that time would govern. That rule is stated in Post 4 from Wilfe and explained in the original post with the answer.

On the other hand, if I get a variation that uses, for example, 2011 dates, I would go with C based on the current state of the law (E8R8 – 1205.01). This rule is stated in Post 31 by Sol.

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37 zanNo Gravatar April 23, 2012 at 2:27 pm

Thanks Sabrina. That makes sense. Maybe you can answer my question on omitted items…10.02.34a

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38 jkpatentlawNo Gravatar June 16, 2012 at 5:07 pm

I have been working for the government for 5 years. I will tell you that it doesn’t matter if the law changed a decade ago…if that question is still in the Database then they probably are not going to fish it out for about another decade. Just being honest about how things work in the government..it’s VERY SLOW.

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39 twobigearsNo Gravatar December 11, 2012 at 10:59 pm

Like this one!
I’ll go with D no matter what happens!

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40 VinoNo Gravatar November 11, 2013 at 2:27 pm

Taking the exam in 2 days. Used PatBar. This is the version of the question for April 2003 AM in PatBar’s Exam Suite. Note: uses 2006 dates.

39. Applicant received a Final Rejection with a mail date of February 28, 2006. The Final Rejection set a 3 month shortened statutory period for reply. Applicant files an Amendment and a Notice of Appeal on March 27, 2006. The examiner indicates in an Advisory Action that the Amendment will be entered for appeal purposes, and how the individual rejection(s) set forth in the final Office action will be used to reject any added or amended claim(s). The mail date of the examiner’s Advisory Action is May 31, 2006. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following dates is the last date for filing a Brief on Appeal without an extension of time?

(A) May 31, 2006.
(B) Monday, May 29, 2006 (a Federal holiday, Memorial Day).
(C) May 27, 2006.
(D) May 30, 2006.
(E) Tuesday, August 29, 2006.

Answer is (D) per MPEP 1205.01. My only guess is that no extension of time was filed, therefore applicant is not able to extend the time 6 months (from February to August). Therefore, the SSP of 3-months to reply governs and because May 27/28 are a Saturday/Sunday respectively and Memorial Day (a Federal holiday) being Monday, May 29, applicant may respond on Tuesday, May 30, 2006. Also, that date would be 2 months after applicant’s Notice of Appeal. Thoughts?

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41 trmckenzNo Gravatar December 20, 2013 at 3:21 pm

The answer to the original question is D. The reply deadline is measured from the Advisory Action. Confirmed at the USPTO test review in Nov. 2013.

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42 mmmaryNo Gravatar June 23, 2015 at 9:23 am

It is my thought that the 2m Rule applies in responding the final rejection where appeal was not requested. In this case this applicant has requested appeal, then the appeal rule for the deadline should apply.

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43 MSchellerNo Gravatar June 23, 2015 at 1:43 pm

I also feel like the answer should be C. I’m not sure what to do if I get this on the exam.

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44 mayteaNo Gravatar June 27, 2015 at 7:31 pm

Why would 27th be right. You have at least to the 28th. 28th not listed, 29th is a holiday. I was advised to be on lookout for any question that specifies a holiday as you will get extra time. I also heard for a PCT they do not give you the extra time and you need to have in before the holiday or weekend.

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45 mayteaNo Gravatar July 8, 2015 at 9:08 am

I found the following question is not posted, and their is no reply to why some answers (d) & (e) are not correct:

After Notice of Appeal. a brief is due, what is proper procedure:

b) brief is due in 2 months from date of appeal (correct)

d) Failure to file the appeal brief within permissible time will result in in dismissal of appeal and abandonment of application containing no allowed claims and an appeal brief will be due 2 months after the date a petition is granted to revive the application and reinstate the appeal.

e) IF appellant is unable to file an appeal brief , within the time slotted by the rules, appellant may file a petition, with fee, to the examining group, requesting additional time, and the time extended is added to the last day the appeal brief would have been due when last day is a Sat Sun or holiday.

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46 confusedNo Gravatar August 10, 2015 at 11:25 am

This question is giving me a headache — I would note, however, that the form “Advisory Action Before the Filing of an Appeal Brief,” PTOL-303 (Rev. 08-2013) provides the following: “The Notice of Appeal was filed on ___. A brief in compliance with 37 CFR 41.37 must be filed within two months of the date of filing the Notice of Appeal (37 CFR 41 .37(a)), or any extension thereof (37 CFR 41.37(e)), to avoid dismissal of the appeal. Since a Notice of Appeal has been filed, any reply must be filed within the time period set forth in 37 CFR 41.37(a).” See MPEP 706.07(f). This, it seems to me, makes the correct answer (C) under current practice. Thoughts?

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47 youngNo Gravatar May 17, 2016 at 10:58 pm

Under 07.2015 MPEP, this “a reply by 2 month & no advisory action by the end of the Statutory Shorted Period” situation (still in MPEP 700) does not affect an appeal brief due (which is discussed in MPEP 1200). Once a notice of appeal is entered, the SSP is out of the picture, and a new 2-month period with possible extension under 37 CFR 1.136(a) starts to run. And of course, an appeal brief must be filed within this period.

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