Appeal (MPEP 1200)

Overview

Appeal matters dealing with substantive issues (rejections); actions on the merits that are made to the Board of Patent Appeals & Interferences. Petition matters dealing with objections to formal/procedural matters made to the Commissioner.

Who and When –

• Patentee can appeal when claims have been twice or finally (ex parte) rejected.
• Patentee can appeal whose claim has been twice or finally (ex parte) rejected in a reexamination filed before Nov. 29, 1999; only finally rejected after said date.
• Non-entered claims and non-entered amendments are NOT appealable

Appeal Process –

• File notice of appeal within 3 months of final (second) rejection on merits
• Extension of tome available for up to 3 more months

Amendments after filing notice –

• Must be made before jurisdiction passes to the Board
• Allowed if amendment adopts a suggestion made, or if it removes an issue
• Not allowed if raises new issues or increases total number of claims
• Examiner may reopen prosecution to issue a new rejection (from the amendment or based on an IDS filed by applicant)

Timing –

• Must be filed within the greater of: 2 months of PTO receipt of notice; or time left to reply to the action being appealed
• Extension of time for up to 5 months
• Failure to file brief dismisses appeal and abandons application if no allowed claims

Appeal Brief Specifics –

• Content requirements spelled out in MPEP §1206
• Must identify claims being appealed
• New arguments are allowed but new evidence is not allowed
• Must traverse all grounds of rejection
• All claims of a group must stand or fall together, unless stated otherwise
• If notice of defects issued by PTO, must reply within the greater of: 1 month; 2 months of the PTO receipt of Notice; time left to reply to action being appealed

Appeal Conference and Examiner’s Answer –

• Examiner must answer within 2 months from receipt of appeal brief
• MPEP §1208 recites 11 content requirements
• No new ground of rejection
• If new grounds, examiner must reopen prosecution; like a regular office action

Timing of Filing a Reply Brief –

• It’s optional, and must be filed within 2 months of examiner’s answer
• Good cause extension of time

Timing of Filing a Request for Oral Hearing –

• Optional; must be filed within 2 months of examiner’s answer
• Good cause extension of time

Decision by the Board –

• Closes prosecution for rejected claims
• Can enter a new ground of rejection for any claim

Reconsideration and Court Appeal –

• Can request rehearing on paper within 2 months from Boards decision
• Good cause extension of time available
• Court action must start within 2 months (at least 60 days) from decision

1200: Appeals!

A few quick notes: Remember, appeals are only for decisions by the USPTO on the actual merits of the patent, other decisions are protested via petition instead. Remember, any petition not filed within 2 months of the underlying action may be dismissed by the USPTO under 37 CFR 1.181(f).

1204: The 2 Steps of initiating An Appeal:

1. Step 0: In order to even have an appeal available the USPTO has to have issued a second rejection on a claim. The second rejection could either be a normal final rejection, or it could be a rejection where the claim was initially rejected in the original app, a CIP/CPA/RCE was filed to continue the app, and then the same claim was rejected in the continuation (1 time original + 1 time continuation == 2 rejections).
   1. One important caveat: Remember that when filing an RCE after a final rejection the applicant has a choice: Either appeal, or file the RCE. By filing an RCE the applicant is agreeing not to file an appeal, at least until the claim is rejected under the RCE itself. So even if there are 2 rejections in the original app, when the applicant files an RCE he is waiving the appeal until there is another rejection.
2. (37 CFR 1.4131): Step 1: The applicant has to file notice of appeal, which simply means that the applicant notifies the USPTO of the intent to appeal and includes a fee.
   1. Danger: Remember that after a final rejection, if the applicant either fails to appeal or to correct the parts of the app that can be allowed (37 CFR 1.113, ex parte Quayle) then the app will be abandoned!
   2. TIME LIMITS: The notice must be filed within 6 months of the 2nd rejection. The standard 37 CFR 1.136(a) extension + fee applies in getting this time limit. (3 month SSP + 3 month extension)
3. Step 2: Actually file an appeal brief:
   1. TIME LIMITS: The applicant has 2 months from the receipt of the notice to appeal until the appeal brief itself is due. If there is an appeal while there are other outstanding deadlines, the appeal acts to toll the other deadlines (just like a pause button). One weird thing: The notice of appeal is supposed to be sent in person or via the Express Mail system. A mailing certificate does not apply here. Instead the USPTO will consider the “date in” at the post office to be the date of receipt of the notice, and that is the date from which the 2 month period begins counting. Examples:
      1. Say there is a final office action (3 month SSP), and the applicant files notice to appeal within 1 month of the office action. If the applicant fails to submit his actual appeal brief within 2 months of the notice, but still gets it in before the original SSP. Then the applicant still has to file a petition for a time extension. (Same thing can happen with an RCE, if the RCE is filed > 2 months after the office action, but before the 3 month SSP, a petition for a 1 month extension is needed).
      2. Note: A failure to provide the appeal brief will result in dismissal of the appeal. However, if some of the claims in the patent were originally allowed, then the parts of the app that are allowed will go back to the examiner and the app will not be immediately abandoned. If however none of the claims were originally allowed, the entire app gets abandoned if the applicant fails to provide a brief. (The normal 37 CFR 1.137 revival terms are available if the abandonment was legally ‘unintentional’ or ‘unavoidable’; remember that a successful 37 CFR 1.137 acts as an RCE).

1205.02: What actually goes into the Appeal Brief:

• Remember: Like any other response, the appeal must be responsive to every ground of rejection made on the merits. If the applicant does not argue against a ground for rejection, it is summarily sustained.
• Components of the brief:
• 1. Real party of interest (the inventor/applicant/assignee)
• 2. Related appeals & interferences (background info on other proceedings)
• 3. Status of Claims (which ones are allowed/rejected)
• 4. Status of Amendments
• 5. Summary of claimed subject matter
• 6. Grounds of rejection to be reviewed on appeal (what the examiner said the grounds of rejection were)
• 7. Argument (why the claims should not be rejected)
• 8. Claims appendix
• 9. Evidence appendix (this is where additional affidavits and other evidence are put)
• 10. Related proceedings appendix.

1205.03: If a brief is non-compliant:
If the brief is non compliant, the applicant will be notified and has a 1 month (30 day) time to correct. The time is extendable under 1.136 (a)(b), and the appeal will be dismissed if the applicant fails to comply. If the applicant actually disagrees with the finding that the brief is non-conformant, he may petition under 37 CFR 1.181 or 41.3, but the due date for the corrections will not toll.

1206: Amendments, affidavits, other evidence that gets filed with or after the appeal:
Amndments:
Remember, it is not a matter of right to have new amendments added on to the application during the appeal process. The amendment process during appeals is under 37 CFR 41.33, and not under the (more permissive) 37 CFR 1.116.

Amendments after the notice of appeal, but before the appeal brief is submitted may contain:

1. 1. claim cancellations
2. 2. any corrections to comply with formal requirements (spelling, punctuation …)
3. 3. present the previously rejected claims in a form that is better for appeal; or
4. 4. Actually amend the spec or claims, however there has to be a good showing and cause given for why this was necessary and also not done earlier.

Amendments filed on or after the date of the appeal brief: (less leeway)

1. 1. cancel claims (remaining claims could be allowed)
2. 2. rewrite dependent claims into independent form (if a broader independent claim is shot down, the dependent claim with all of the limitations of its parent + extra limitations might still be allowable and needs to become an independent claim if the parent is no more).

Affidavits & Other Evidence:
This extra evidence may be admitted, but only if the examiner determines that:

1. The affidavits or other evidence that overcome all rejections under appeal.; and
2. The showing of good or sufficient reasons why the affidavit or other evidence is actually necessary and was not available earlier.

1207: The Examiner’s Answer to an Appeal Brief:
The examiner has some options after reading the appeal brief:

1. 1. reopen the prosecution and enter in a new ground for rejection (as long as this is approved by his supervising examiner).
2. 2. Withdraw the final rejection, and allowing the claims (when the appeal overcomes the grounds for rejection). or;
3. 3. Maintain the appeal by drafting an examiner’s answer that will go along with the appeal brief to the board. After 20040913 this brief may also contain new grounds for a rejection too.

More on 1207:

1. There is a mandatory appeal conference when a valid appeal brief is filed. It has: the main examiner for the app, the supervisory patent examiner, and a conferee examiner who is experienced in the area that the patent covers.
2. The examiner’s answer should come within 2 months of the receipt of the brief by the examiner and should contain:
   1. responses to arguments in the brief and point out errors in the brief.

If the appeal is persuasive the examiner should also expressly withdraw his rejection on grounds where the appeal was persuasive.

More on appeals including oral hearings; What happens as a result of the appeal; The Nuclear Option (going to a real court) (1209-12116.02)

1209: Oral Hearings:
The applicant may request one in front of the board. TIME: the request is 2 months from the examiner’s initial or supplemental answer (just like other time limits in an appeal), however it can only be extended for good cause (37 CFR 1.136(b)) not automatically.
Once the hearing is requested, the USPTO will contact the applicant with the particulars of time/location of the hearing, if the applicant does not confirm this notice, the hearing is waived!

1210: Actions that can happen after the examiner makes his answer, but before the Board actually makes a decision: (37 CFR 41.35)
The application & appeal will bounce from the TC (where normal examination happens) to the Board (for appeal) at one of these times:

1. After 2 months from the time of the examiner’s answer/supplemental answer if the applicant does not file a reply brief to that answer; or
2. If the applicant did file a reply brief, after the examiner notifies the applicant that the reply brief has been entered & considered and that the appeal will go to the board.

1211: When the Board remands an appeal back to the Examiner:
This can happen in different situations where the board wants the examiner to look at the app again:

1. 1211.01: Further consideration of a rejection:
   1. The examiner’s supplemental answer may have new grounds for rejection of a claim if it is in response to the board sending the app back for further consideration.
   2. Whenever the examiner makes a supplemental answer (even if it does not have new grounds for rejection) the applicant must file one of these forms of response to avoid having the appeal dismissed:
      1. 1. Reopen prosecution on the claim, this is the normal 37 CFR 1.111 response to a rejection and it can also have the 37 CFR 1.130/1.131/1.132 affidavits & evidence accompanying the response.
      2. 2. Maintain the appeal: By filing a brief (37 CFR 41.41) the appeal can be kept going after the remand & supplemental response.
2. 1211.02: Remand to consider a new amendment: There is no obligation to consider new amendments during the appeal, but: If the amendment is just to cancel claims that are not part of the proceeding, or to re-write dependent claims in independent form (this is important to avoid abandonment in some cases, see below) then the board will remand if there is an amendment.
3. 1211.03: Remand for new affidavits or declarations: These are only considered when the appellant makes the showing under 37 CFR 1.116(c) as to why the affidavits are necessary, and as to why they were not presented earlier.

1212: If the board has a matter of interest in deciding the case (like wanting more info on case law, or the applicability of prior art that is not already on the record), then it can make a request for the appellant to file a brief that gives the board the info it wants. If the appellant does not respond within the time period set by the board, the appeal may be dismissed.

1213: What Decisions the Board may Make:

1. The board can reverse the examiner’s rejection, affirm it in whole or in part, or remand. Remember, that for a later court case, that a decision to remand cannot be brought up for judicial review (only an affirmation of the rejection).
2. 1213.01: The Board may simply state how the applicant could amend an appealed claim such that it would be allowed. The applicant may then properly amend the claim within the time period for seeking court review (that is a 2 month window starting from the date of the board’s final decision).
3. 1213.02: New Grounds for Rejection: the Board can make a rejection on new grounds for any claim it wants to. (even if the claim was not previously rejected). Remember, this is different than the examiner who can only reject a claim on new grounds if he had already rejected the same claim for different reasons (an examiner it not allowed to find a new ground to reject a claim he previously put into allowance).

1214: What to do when the Board rejects on a New Ground: (remember, now there is a new issue for the applicant to respond to):
The applicant’s choices are:

1. 1. Pretend like this is an initial rejection from an examiner in an normal examination and re-open the examination. The applicant will file the standard 37 CFR 1.111 response, and can have the 37 CFR 1.130/1.131/1.132 affidavits and extra evidence if necessary.
   1. TIME: This is under 37 CFR 41.50(b)(1) and has to happen within 2 months of the Board’s decision. It can only be extended for good cause under 1.136(b) (there is no automatic extension)
   2. Prosecution might be re-opened for this claim, but it is not a full re-opening of prosecution on the whole app, just on the claim in question.
2. 2. Keep inside the appeal process by requesting a re-hearing before the board to address the new ground.
   1. TIME: exactly the same as above.
3. 1214.03: The Rehearing:
   1. The applicant will try to specifically show where he believes the board misapprehended the claim and why the claim should be allowed.
4. 1214.04: What happens when the Examiner is Reversed in full:
   1. At this point, the app goes directly back to the examiner, he will either then put all the claims in allowance and get the patent ready for issue, or the examiner may request his own re-hearing (again a 2 month time frame for that re-hearing).
5. 1214.05: What happens when Claims are Withdrawn from the Appeal:
   1. Say there are 3 disputed claims, but the appellant either does not argue for some of them on appeal or withdraws arguments for some of them. If 2 of the 3 claims are allowed by the Board (reversing the examiner) and the third claim is considered withdrawn since it is not argued, then the 2 reversed claims go into allowance, and the non-argued claim is now canceled by the appellant’s acts.
6. 1214.06: What happens when the Examiner is sustained in whole or in part:
   1. If no claims are allowed at all: After the Board’s decision the 2 month limit for taking the case to court starts running. After that is over, if there has been no court action the app is abandoned.
   2. THIS IS WHY IT IS IMPORTANT TO PUT DISPUTED DEPENDENT CLAIMS INTO INDEPENDENT FORM: If it turns out that a parent independent claim is not allowed, but that a dependent claim (that has further limitation) would be allowed except for the fact that it is a dependent claim…. the app is still abandoned anyway! (It is up to the applicant to get the claims ready for this eventuality).
   3. When some of the claims are allowed:
      1. There is no requirement to file any further reply, the claims that are allowed will go back to the examiner (most likely to issue, or perhaps to have the examiner request a re-hearing). If there is no reply the other claims will be canceled.
   4. When the claims require further action: (Like in a case where a generic claim rejection is reversed so more work is needed no the claim by the examiner): It just goes back to the examiner for more work.
7. 1214.07: Reopening Prosecution: (One option after a rejection on new grounds by the Board):
   1. Normally once the application is in appeal, the appellant has no right to enter in amendments to the app. However: If the amendment is accompanied by a 37 CFR 1.114 RCE, then the app will go back into prosecution via the RCE along with the amendment.

1215: Withdrawing or Dismissing an Appeal:

1. 1215.01: Withdrawing an appeal: As long as the withdrawal will not actually cause the app to be abandoned, an atty who is not of record (or the atty of record or the applicant) can withdraw an appeal under 37 CFR 1.34.
2. Another way to withdraw from appeal is to file an RCE (37 CFR 1.114) along with the 37 CFR 1.117(e) fee and re-open the app for prosecution under the RCE.
3. Remember: If the board has a rejection on new grounds in its ruling, or if the examiner files a supplemental answer (after the initial answer) that includes new grounds of rejection, then the applicant has the right to re-open prosecution on the new rejection by filing the standard 37 CFR 1.111 response along with affidavits/evidence under 37 CFR 1.130/1.131/1.132.
4. 1215.02: If at least some of the claims for the app are allowed, then withdrawing the appeal will not abandon the app (although claims under appeal will be canceled if no further action is taken on them).
5. 1215.03: Partial Withdrawal: What you’d expect, claims that are withdrawn and not acted upon are canceled (2 month time window from the board’s decision, or 2 months from an examiner’s answer with no reply brief given).
6. 1215.04: When an appeal is dimissed by the Board:
   1. When there is no appeal brief filed within the 37 CFR 41.37 time frame (2 months from filing of notice of appeal) the appeal gets dismissed.
   2. Remember: If some claims are still allowable, the patent can still issue with the allowable claims, but all others get canceled.

1216: The People’s Court: Going to Court:

1. Remember: This can only happen after the Board has issued a rejection, if the Board remands back to the examiner there is no issue that the courts have subject matter jurisdiction over.
2. TIME: 2 months after the Board’s final decision (in case there are re-hearing requests that are in play it is from the final time at which the Board is no longer hearing anything new about the appeal). Extensions are only for good cause.
3. Option 1: Directly to the Federal Circuit Court of Appeals:
   1. If all claims were previously rejected then this court’s decision is final on the patent one way or another.
   2. If however some claims were previously allowed, then only the claims that were rejected are at an end, the allowed claims can continue to issuance.
   3. Remand: The court can remand back to prosecution just as the Board can, although the examiner cannot request a re-hearing. The court will give the merits it wants the examiner to consider.
   4. Reopening prosecution: Rare but it may happen.
4. Option 2: Going to the DC Circuit Court:
   1. What’s the big difference? In the Circuit Court it is actually possible to introduce new evidence while the court of appeals does not allow this. However, the plaintiff will have to show good cause why this evidence was not actually given to the Board or examiner earlier in the process. (Note: new evidence that was previously withheld due to fraud or gross negligence is not allowed).
   2. The circuit court can issue the same decisions as the appellate court above.

Disclaimers:
Remember, there are 2 kinds:

1. 1. Statutory Disclaimers: These are where the patentee expressly disclaims 1 or more claims in the patent. This is usually due to losing a lawsuit or something along those lines.
2. 2. Terminal Disclaimers: Remember, these are for shortening the life of a claim to that of a pre-existing patent. They are useful in avoiding some double-patenting rejections (like a judicial double patenting rejection).
   1. It must expressly disclaim the terminal part of the patent’s term.
   2. IT must state that the patent on the matter will only be enforceable for the limited time period that is disclaimed.
   3. Who has to sign a disclaimer: Either the applicant, the assignee (if assigned in full), applicant & assignee together (for partial assignment), or the atty/agent of record.