MPEP 1203

1203 Administrative Handling[edit | edit source]

Ex parte appeals to the Board, and papers relating thereto filed prior to a docketing notice from the Board, are forwarded to the Technology Center (TC) for processing. Appeal papers, such as the notice of appeal, appeal brief, and request for extension of time to file the brief, are processed by the appropriate TC.

If the brief is not filed within the time designated by 37 CFR 41.37, the applicant will be notified that the appeal stands dismissed.

The Board’s docketing procedure is designed to provide notification to the appellant within one month of receipt of an appealed application at the Board that (A)

the appeal has been received at the Board and docketed, or (B) the appeal is being returned to the examiner for attention to unresolved matters.

When an application appearing to include an appeal under 35 U.S.C. 134 for decision by the Board is received from the patent examining corps, it will be reviewed for:

(A)gross formalities (including, but not limited to, matters such as the presence of (1) a notice of appeal, (2) appellant’s brief, (3) examiner’s answer, and (4) evidence of an appeal conference having been held);

(B)fine formalities (including, but not limited to, matters such as (1) unacknowledged Information Disclosure Statements or other papers, and (2) deficiencies in the brief or answer); and

(C)status matters (including, but not limited to, matters such as the presence of communications from appellant beyond the brief, such as a reply brief or a request for oral hearing).

If the appeal is ready for docketing (that is, if no return of the case to the examiner is required per the review) three events will occur:

(A)an appeal number will be assigned;

(B)the Board will issue a docketing notice, identifying the relevant appeal contents (brief, reply brief if any, request for oral hearing if any, and the filing date of each such item); and

(C)the appeal will be assigned to a master docket for subsequent reassignment to the docket of an individual Administrative Patent Judge (APJ), or directly to the docket of an individual APJ.

If the appeal cannot be docketed due to matters requiring further attention in the patent examining corps, the appeal will be administratively returned to the patent examining corps with an order indicating why the appeal cannot be docketed and notification of that return, in the form of a copy of the order, will be mailed to the appellant. No appeal number will be assigned until the appeal is ready for docketing.

The docketing notice or order indicating why the appeal cannot be docketed will provide the appellant and the examiner with notification that the appeal is: (A) at the Board in condition for referral to a panel; or (B) that the appeal is being returned to the patent examining corps to resolve matters requiring attention prior to decision of the appeal. Thus, the appellant will know to which organization to look for the next communication in the appealed application.

"SPECIAL CASE"

Subject alone to diligent prosecution by the applicant, an application for patent that once has been made special and advanced out of turn by the United States Patent and Trademark Office (Office) for examination will continue to be special throughout its entire course of prosecution in the Office, including appeal, if any, to the Board. See MPEP § 708.02.

A petition to make an application special after the appeal has been forwarded to the Board may be addressed to the Board. However, no such petition will be granted unless the brief has been filed and applicant has made the same type of showing required by the Director under 37 CFR 1.102. Therefore, diligent prosecution is essential to a favorable decision on a petition to make special.