Brief Summary:
An applicant may appeal to the Patent Trial and Appeal Board when he or she believes their application deserves to be allowed to patent in spite of a rejection. The circumstances for which it is appropriate to file an appeal and what is required to file one are discussed here.
In order to appeal, an individual must follow a particular prosecution process which involves filing a Notice of Appeal and then later, an Appeal Brief.
After an Appeal Brief is filed, the Board will decide whether or not to accept the appeal and if so, they will begin prosecuting it. The Board will reply to the applicant by either requesting more documents or by allowing the questionable claims to patent. If the Board denies the claims, the applicant may appeal the decision to the U.S. Court of Appeals for Federal Circuit.
Key Terms:
| Appeal | An appeal is the process by which an applicant challenges a decision made by a patent examiner, typically regarding the rejection of a patent application, by seeking review from a higher authority such as a patent appeal board. |
| Appeal Brief | An appeal brief is a document submitted by an applicant outlining the arguments and legal basis for contesting a patent examiner’s decision to reject a patent application, forming the foundation of the appeal process. |
| Examiner’s Answer | An examiner’s answer is a written response from the patent examiner addressing the arguments made in an appeal brief, often maintaining the original grounds for rejecting the patent application. |
| Oral Hearing | An oral hearing is a formal proceeding where the applicant presents arguments verbally before a patent appeal board or court to contest a decision made by a patent examiner. |
| Patent Trial and Appeal Board | The Patent Trial and Appeal Board (PTAB) is an administrative body within the U.S. Patent and Trademark Office that conducts trials and hears appeals regarding patent application rejections and post-grant patent disputes. |
| Reply Brief | A reply brief is a document submitted by an applicant in response to the examiner’s answer during an appeal, addressing points raised and reinforcing arguments for why the patent should be granted. |
37 CFR (Code of Federal Regulations):
| 37 CFR 41.35 – Jurisdiction over appeal. |
| 37 CFR 41.35 outlines that the jurisdiction over an appeal in a patent application or reexamination proceeding is transferred to the Patent Trial and Appeal Board upon the filing of a notice of appeal. |
| 37 CFR 41.31 – Appeal to Board. |
| 37 CFR 41.31 allows an applicant to appeal to the Patent Trial and Appeal Board by filing a notice of appeal after receiving a final rejection of claims in a patent application or reexamination proceeding. |
35 USC (United States Code):
| 35 USC 141 – Appeal to Court of Appeals for the Federal Circuit. |
| 35 USC 141 permits parties dissatisfied with decisions from the Patent Trial and Appeal Board to appeal directly to the United States Court of Appeals for the Federal Circuit. |
| 35 USC 306 – Appeal. |
| 35 USC 306 allows patent owners involved in reexamination proceedings to appeal decisions made by the Patent and Trademark Office to the Patent Trial and Appeal Board and subsequently to the United States Court of Appeals for the Federal Circuit. |
Quick Statistics:
Number of Pages: 77 pgs
Sections: 1201 – 1216
List of Sections:
| 1201 | Introduction | |
| 1202 | Composition of Board | |
| 1203 | Administrative Handling | |
| 1204 | Notice of Appeal | |
| • 1204.01 Reinstatement of Appeal • 1204.02 Pre-Appeal Brief Review Request and Conference Pilot Program • 1204.03 Interviews After Notice of Appeal • 1204.04 Official Record on Appeal | ||
| 1205 | Appeal Brief | |
| • 1205.01 Time for Filing Appeal Brief • 1205.02 Appeal Brief Content • 1205.03 Non-Compliant Appeal Brief and Amended Brief | ||
| 1206 | Amendments and Affidavits or Other Evidence Filed With or After Appeal | |
| 1207 | Examiner’s Answer | |
| • 1207.01 Appeal Conference • 1207.02 Contents of Examiner’s Answer • 1207.03 New Ground of Rejection in Examiner’s Answer | ||
| • 1207.03(a) Determining Whether a Ground of Rejection is New • 1207.03(b) Petition to Designate a New Ground of Rejection and to Reopen Prosecution • 1207.03(c) Appellant’s Reply to New Grounds of Rejection | ||
| • 1207.04 Reopening of Prosecution After Appeal • 1207.05 Substitute Examiner’s Answer | ||
| 1208 | Reply Briefs and Fee for Forwarding Appeal | |
| • 1208.01 Fee for Forwarding an Appeal to the Board | ||
| 1209 | Oral Hearing | |
| 1210 | Actions Subsequent to Examiner’s Answer but Before Board’s Decision | |
| 1211 | Remand by Director or Board | |
| • 1211.01 Remand by Board for Further Consideration of Rejection • 1211.02 Remand To Consider Amendment • 1211.03 Remand To Consider Affidavits or Declarations • 1211.04 Remand by Board for Further Search | ||
| 1212 | Board Requires Appellant to Address Matter | |
| 1213 | Decision by Board | |
| • 1213.01 [Reserved] • 1213.02 New Grounds of Rejection by Board • 1213.03 Publication of and Public Access to Board Decision | ||
| 1214 | Procedure Following Decision by Board | |
| • 1214.01 Procedure Following New Ground of Rejection by Board • 1214.02 [Reserved] • 1214.03 Rehearing • 1214.04 Examiner Reversed in Whole • 1214.05 Cancellation of Claims Not Appealed • 1214.06 Examiner Sustained in Whole or in Part; Claims Require Action • 1214.07 Reopening of Prosecution | ||
| 1215 | Withdrawal or Dismissal of Appeal | |
| • 1215.01 Withdrawal of Appeal • 1215.02 Claims Standing Allowed • 1215.03 Partial Withdrawal • 1215.04 Dismissal of Appeal | ||
| 1216 | Judicial Review | |
| • 1216.01 Appeals to the U.S. Court of Appeals for the Federal Circuit • 1216.02 Civil Suits Under 35 U.S.C. 145 and 146 |