Editing MPEP 1204

<noinclude>{{MPEP Section|1203|1200|1205}}</noinclude>

==[[MPEP 1204|1204 Notice of Appeal]]== 

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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 primary examiner 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 primary examiner 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 primary examiner 
favorable to the patentability of any original or proposed amended 
or new claim of a patent, having once paid the fee for such 
appeal. 

35 U.S.C. 41. Patent fees; patent and trademark search 
systems

(a)GENERAL FEES. — The Director shall charge the 
following fees: 

(6)APPEAL FEES. —

(A)On filing an appeal from the examiner to the Board 
of Patent Appeals and Interferences, $500.

(B)In addition, on filing a brief in support of the 
appeal, $500, and on requesting an oral hearing in the appeal 
before the Board of Patent Appeals and Interferences, $1,000.

37 CFR 41.31. Appeal to Board.

(a)Who may appeal and how to file an appeal. (1) Every 
applicant, any of whose claims has been twice rejected, may 
appeal from the decision of the examiner to the Board by filing a 
notice of appeal accompanied by the fee set forth in § 41.20(b)(1) 
within the time period provided under § 1.134 of this title for 
reply.

(2)Every owner of a patent under ex parte reexamination 
filed under § 1.510 of this title before November 29, 1999, any of 
whose claims has been twice rejected, may appeal from the decision 
of the examiner to the Board by filing a notice of appeal 
accompanied by the fee set forth in § 41.20(b)(1) within the time 
period provided under § 1.134 of this title for reply.

(3)Every owner of a patent under ex parte reexamination 
filed under § 1.510 of this title on or after November 29, 1999, 
any of whose claims has been finally (§ 1.113 of this title) 
rejected, may appeal from the decision of the examiner to the 
Board by filing a notice of appeal accompanied by the fee set forth 
in § 41.20(b)(1) within the time period provided under § 1.134 of 
this title for reply.

(b)The signature requirement of § 1.33 of this title 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 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 paragraphs (a)(1) through 
(a)(3) of this section are extendable under the provisions of § 
1.136 of this title for patent applications and § 1.550(c) of this title 
for ex parte reexamination proceedings.

I. APPEAL BY PATENT APPLICANT

Under 37 CFR 41.31(a)(1), an applicant for a 
patent dissatisfied with the primary examiner’s decision 
in the second  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 41.20(b)(1) 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  rejected” does not have to be related 
to a particular application. See Ex Parte Lemoine, 46 
USPQ2d 1420, 1423 (Bd. Pat. App. & Inter. 1994) 
(“so long as the applicant has twice been denied a 
patent, an appeal may be filed”).

For example, if any claim was rejected in a parent application, and the claim is again rejected in a continuing application, 
then applicant can choose to file an appeal in the 
continuing application, even if the claim was rejected 
only once in the continuing application. Applicant 
cannot file an appeal in a continuing application, or 
after filing a request for continued examination (RCE) 
under 37 CFR 1.114, until the application is under a 
rejection. Accordingly, applicant cannot file a notice 
of appeal with an RCE regardless of whether the 
application has been twice rejected prior to the filing 
of the RCE.

Although the rules do not require that the 
notice of appeal identify the rejected claim(s) 
appealed, or be signed, applicants may file 
notices of appeal which identify the appealed claims 
and are signed.  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, to be signed. 
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 notice of
appeal fee to a deposit account, the notice of appeal 
will be unacceptable because the notice of 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. 
For example, 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 Office action (e.g., a final rejection) 
from which the appeal was taken, so long as an 
appropriate petition and fee for an extension of time 
under 37 CFR 1.136(a) is filed either prior to or 
with the notice of appeal.

The use of a separate letter containing the notice 
of appeal is strongly recommended. 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.

II. APPEAL BY PATENT OWNER

37 CFR 41.31(a)(2) and (a)(3) 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  filed before 
November 29, 1999, the patent owner may appeal to 
the Board after the second rejection of the 
claims.

In an ex parte reexamination  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. 

The fee for filing the notice of appeal by a patent 
owner is set forth in 37 CFR 41.20(b)(1), and the 
time period to pay the fee is determined as provided in 
37 
CFR 1.134 and 37 CFR 1.550(c).

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 
41.60 through 41.81. 37 CFR 41.30
through 41.54 are not applicable to appeals in 
inter partes reexamination proceedings. See MPEP 
§ 2674 to § 2683 for 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.

Form PTO/SB/31. Notice of Appeal from the Examiner to the Board of Patent Appeals and InterferencesForm PTO/SB/31. Notice of Appeal from the Examiner to the Board of Patent Appeals and Interferences

Privacy Act StatementPrivacy Act Statement

III.ACKNOWLEDGEMENT

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.

Appellant may also check the status of the 
application and the receipt date of the notice of appeal 
on the Office’s Patent Application Information 
Retrieval (PAIR) system via the Internet.

IV.DEFECTIVE NOTICE OF APPEAL

If a notice of appeal is defective, the Office will 
notify the applicant of the non-compliance. A notice 
of appeal is not a proper reply to the last Office action 
if none of the claims in the application has been twice 
rejected. A notice of appeal is defective if it was not 
timely filed within the time period set forth in the last 
Office action, or the notice of appeal fee set forth in 
37 CFR 41.20(b)(1) was not timely filed. Form 
PTOL-461 (Rev. 9-04 or later), Communication Re: 
Appeal, should be used to indicate defects in a notice 
of appeal.

When appellant files an appeal brief without filing 
a notice of appeal first, the Office should treat the 
appeal brief as a notice of appeal and an appeal brief. 
For this situation, appellant must file the brief within 
the time period for reply set forth in the last Office 
action and the fees under 37 CFR 41.20(b)(1) and 
(b)(2) for filing a notice of appeal and an appeal brief 
in compliance with 37 CFR 41.31 and 41.37.

Communiction Re: Appeal

===1204.01 Reinstatement of Appeal===

If an appellant wishes to reinstate an appeal after 
prosecution is reopened, appellant must file a new 
notice of appeal in compliance with 37 CFR 41.31and a complete new appeal brief in compliance with 
37 CFR 41.37. Any previously paid appeal fees set 
forth in 37 CFR 41.20 for filing a notice of appeal, filing 
an appeal brief, and requesting an oral hearing (if 
applicable) will be applied to the new appeal on the 
same application as long as a final Board decision has 
not been made on the prior appeal. If, however, the 
appeal fees have increased since they were previously 
paid, then appellant must pay the difference between 
the current fee(s) and the amount previously paid. 
Appellant must file a complete new appeal brief in 
compliance with the format and content requirements 
of 37 CFR 41.37(c) within two months from the date 
of filing the new notice of appeal. See MPEP § 1205.