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1205 Notice of Appeal - 1200 Appeal
1205 Notice of Appeal
35 U.S.C. 134 Appeal to the Board of Patent Appeals and Interferences.
(a) PATENT APPLICANT.- An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the administrative patent judge to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.
(b) PATENT OWNER.- A patent owner in any reexamination proceeding may appeal from the final rejection of any claim by the administrative patent judge to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.
(c) THIRD-PARTY.- A third-party requester in an inter partes proceeding may appeal to the Board of Patent Appeals and Interferences from the final decision of the administrative patent judge favorable to the patentability of any original or proposed amended or new claim of a patent, having once paid the fee for such appeal. The third-party requester may not appeal the decision of the Board of Patent Appeals and Interferences.
35 U.S.C. 41 Patent fees; patent and trademark search systems
(a) The Director shall charge the following fees:
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(6)
(A) On filing an appeal from the examiner to the Board of Patent Appeals and Interferences, $300.
(B) In addition, on filing a brief in support of the appeal, $300, and on requesting an oral hearing in the appeal before the Board of Patent Appeals and Interferences, $260.
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37 CFR 1.191 Appeal to Board of Patent Appeals and Interferences.
(a) Every applicant for a patent or for reissue of a patent, and every owner of a patent under ex parte reexamination filed under § 1.510 for a patent that issued from an original application filed in the United States before November 29, 1999, any of whose claims has been twice or finally (§ 1.113) rejected, may appeal from the decision of the examiner to the Board of Patent Appeals and Interferences by filing a notice of appeal and the fee set forth in § 1.17(b) within the time period provided under §§ 1.134 and 1.136 for reply. Notwithstanding the above, for an ex parte reexamination proceeding filed under § 1.510 for a patent that issued from an original application filed in the United States on or after November 29, 1999, no appeal may be filed until the claims have been finally rejected (§ 1.113). Appeals to the Board of Patent Appeals and Interferences in inter partes reexamination proceedings filed under § 1.913 are controlled by §§ 1.959 through 1.981. Sections 1.191 through 1.198 are not applicable to appeals in inter partes reexamination proceedings filed under § 1.913.
(b) The signature requirement of § 1.33 does not apply to a notice of appeal filed under this section.
(c) An appeal when taken must be taken from the rejection of all claims under rejection which the applicant or patent owner proposes to contest. 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 §§ 1.191 and 1.192 are subject to the provisions of § 1.136 for patent applications and § 1.550(c) for reexamination proceedings. The time periods set forth in §§ 1.193, 1.194, 1.196 and 1.197 are subject to the provisions of § 1.136(b) for patent applications or § 1.550(c) for reexamination proceedings. See § 1.304(a) for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action.
(e) Jurisdiction over the application or patent under reexamination passes to the Board of Patent Appeals and Interferences upon transmittal of the file, including all briefs and examiner's answers, to the Board. Prior to the entry of a decision on the appeal, the Commissioner may sua sponte order the application remanded to the examiner.
APPEAL BY PATENT APPLICANT
Under 37 CFR 1.191(a), an applicant for a patent dissatisfied with the primary examiner's decision in the second or final rejection of his or her 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 1.17(b) 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 or finally...rejected" does not have to be related to a particular application. For example, if any claim was rejected in a parent application, and the claim is again rejected in a continuing application, then applicant will be entitled to file an appeal in the continuing application, even if the claim was rejected only once in the continuing application.
Although the rules no longer require that the notice of appeal identify the rejected claim(s) appealed, or be signed, applicants should continue to file notices of appeal which identify the appealed claims and are signed. The requirement was eliminated from 37 CFR 1.191 as being redundant of the requirements of 37 CFR 1.192 and to avoid the delay and expense to both applicant and the United States Patent and Trademark Office (Office) which is involved in treating a defective notice of appeal. 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. 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 appeal fee to a deposit account, the notice of appeal will be unacceptable because the 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 3 months for applications. See MPEP § 714.13. 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, except where claims suggested for interference have been copied. The notice of appeal and appropriate fee may be filed up to 6 months from the date of the final rejection, so long as an appropriate petition and fee for an extension of time is filed either prior to or with the notice of appeal.
APPEAL BY PATENT OWNER
37 CFR 1.191 provides 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 an ex parte reexamination of a patent that issued from an original application filed before November 29, 1999, the patent owner may appeal to the Board either (A) after final rejection of the claims, or (B) after the second rejection of the claims. This is based on the version of 35 U.S.C. 134 in existence prior to the amendment of the reexamination statute on November 29, 1999 by Public Law 106-113.
In an ex parte reexamination of a patent that issued from an original application 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. See the current version of 35 U.S.C. 134.
The fee for filing the notice of appeal by a patent owner is set forth in 37 CFR 1.17(b), and the time period to pay the fee is determined as provided in 37 CFR 1.134 and 37 CFR 1.136.
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 of Patent Appeals and Interferences in inter partes reexamination proceedings filed under 35 U.S.C. 311 are governed by 37 CFR 1.959 through 1.981. 37 CFR 1.191 through 1.198 are not applicable to appeals in inter partes reexamination proceedings.
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.
MATTERS HANDLED CONCURRENTLY WITH APPEAL
The Office does not acknowledge receipt of a notice of appeal by separate letter. However, if a self-addressed postcard is included with the notice of appeal, it will be date stamped and mailed.
Form paragraphs 12.01-12.04 may be used to indicate defects in a notice of appeal.
¶ 12.01 Notice of Appeal Unacceptable - Fee Unpaid
The notice of appeal filed on [1] is not acceptable because the appeal fee required under 37 CFR 1.17(b) was not filed, or was not timely filed.
Applicant may obtain an extension of time under 37 CFR 1.136(a) to file the appropriate appeal fee. The date on which the notice of appeal, the appeal fee, the petition under 37 CFR 1.136(a), and the petition fee are filed will be the date of the reply and also the date for determining the period of extension and the corresponding amount of the fee. In no case may an applicant reply later than the maximum SIX MONTH statutory period or obtain an extension pursuant to 37 CFR 1.136(a) for more than FIVE MONTHS beyond the date of reply set in an Office action.
¶ 12.02 Notice of Appeal Unacceptable - No 2nd Rejection
The notice of appeal filed on [1] is not acceptable under 37 CFR 1.191(a) because [2].
Examiner Note
In bracket 2, insert the following wording, as appropriate:
--there has been no second or final rejection in this patent application--;
--there has been no second or final rejection in this ex parte reexamination proceeding on a patent that issued from an original application filed in the United States before November 29, 1999--; or
--there has been no final rejection (37 CFR 1.113) of the claims in this ex parte reexamination proceeding on a patent that issued from an original application filed in the United States on or after November 29, 1999--.
¶ 12.03 Notice of Appeal Unacceptable - Not Timely Filed
The notice of appeal filed on [1] is not acceptable because it was filed after the expiration of the period set in the prior Office action. This application will become abandoned unless applicant obtains an extension under 37 CFR 1.136(a). The date on which the notice of appeal, the appeal fee, the petition under 37 CFR 1.136(a), and the petition fee under 37 CFR 1.17(a) are filed will be the date of the reply and also the date for determining the period of extension and the corresponding amount of the fee. In no case may an applicant reply later than the maximum SIX MONTH statutory period orobtain an extension pursuant to 37 CFR 1.136(a) for more than FIVE MONTHS beyond the date of reply set in an Office action.
¶ 12.04 Notice of Appeal Unacceptable - Claims Allowed
The notice of appeal filed on [1] is not acceptable because a notice of allowability was mailed by the Office on [2].