MPEP 1210

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← MPEP 1209 ↑ MPEP 1200 MPEP 1211 →

1210 Actions Subsequent to Examiner's Answer but Before Board's Decision[edit | edit source]


37 CFR 41.35. Jurisdiction over appeal.

(a) Jurisdiction over the proceeding passes to the Board upon transmittal of the file, including all briefs and examiner’s answers, to the Board.

(b) If, after receipt and review of the proceeding, the Board determines that the file is not complete or is not in compliance with the requirements of this subpart, the Board may relinquish jurisdiction to the examiner or take other appropriate action to permit completion of the file.

(c) Prior to the entry of a decision on the appeal by the Board, the Director may sua sponte order the proceeding remanded to the examiner.

The application file and jurisdiction of the application are normally transferred from the Technology Centers to the Board at one of the following times:

(A)After 2 months from the examiner’s answer or supplemental examiner’s answer, plus mail room time, if no reply brief has been timely filed.

(B)After the examiner has notified the appellant by written communication that the reply brief has been entered and considered and that the application will be forwarded to the Board (for example, by mailing a PTOL-90 with form paragraph 12.181, as described in MPEP § 1208).

Any amendment or other paper relating to the appeal filed thereafter but prior to the decision of the Board, may be considered by the examiner only in the event the case is remanded by the Board for that purpose.


Where appeal is taken from the second or final rejection only of one or more claims presented for the purpose of provoking an interference, jurisdiction of the rest of the case remains with the examiner, and prosecution of the remaining claims may proceed as though the entire case was under his or her jurisdiction. Also, where the examiner certifies in writing that there is no conflict of subject matter and the administrative patent judge in charge of the interference approves, an appeal to the Board may proceed concurrently with an interference. See MPEP Chapter 2300.


To avoid the rendering of decisions by the Board in applications which appellants have decided to abandon or to refile as continuations, appellants should promptly inform the Chief Clerk of the Board in writing as soon as they have positively decided to refile or to abandon an application containing an appeal awaiting a decision. Failure to exercise appropriate diligence in this matter may result in the Board’s refusing an otherwise proper request to vacate its decision.

See MPEP § 1215.01 - § 1215.03 concerning the withdrawal of appeals.