Patent Trial and Appeal Board (PTAB) FAQs

Patent Trial and Appeal Board (PTAB) - Procedures - Other

An applicant must follow the requirements set forth in 37 CFR § 41.31 which require that a notice be filed within the time allowed for response from the examiner's last office action, and also pay a fee. See Section 1204 of the Manual of Patent Examining Procedure. The notice of appeal and appropriate fee may be filed up to 6 months from the date of the Office action 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. A sample form can be found at http://www.uspto.gov/web/forms/sb0031.pdf. If certificate of mailing procedures under 37 CFR § 1.8 are used, see MPEP 512. The actual receipt date of the Notice of Appeal will also be the date which is entered on Office records and from which any subsequent periods are calculated. For example, 37 CFR § 41.37 gives an appellant 2 months from the receipt date of the notice of appeal to file an appeal brief. If the last day to reply to a final Office action was January 10, 2011, and applicant deposited a Notice of Appeal with fee in the U.S. mail on January 10, 2011, and so certified using a certificate of mailing, that appeal is timely even if it is not received in the U.S. Patent and Trademark Office until January 16, 2011. Since the date of receipt of the notice of appeal is January 16, 2011, this date will be used to calculate the time at which the brief is due, and thus the brief will be due on March 16, 2011. This is 2 months after the date of receipt of the notice of appeal.

A notice of appeal may be filed after any of the claims has been twice rejected in applications for patent, including reissue or in an ex parte reexam based on a request filed before November 29, 1999. The limitation of "twice 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 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. For ex parte reexaminations based on requests filed on/after November 29, 1999, the claims must be finally rejected - see 37 CFR § 41.31 (a)(3). To appeal, an applicant must file a notice of appeal followed by an appeal brief.

An appellant must follow the requirements set forth in 37 CFR § 41.37 which require a brief to be filed within 2 months from the filing date of the notice of appeal, and payment of a fee. All requirements of the brief are set forth in 37 CFR § 41.37. The time periods set forth in 37 CFR § 41.37 are extendable under the provisions of 37 CFR § 1.136 for patent applications and 37 CFR § 1.550(c) for ex parte reexamination proceedings. The See also Section 1205 of the Manual of Patent Examining Procedure (MPEP) for additional guidance. To avoid common pitfalls in preparing an appeal brief, see also http://www.uspto.gov/ip/boards/bpai/procedures/guidance_noncompliant_briefs.jsp

A request to withdraw an appeal may be filed any time before the decision is rendered. Withdrawal of an appeal may result in the abandonment of some or all claims. See MPEP §§ 1215.01, 1215.02, 1215.03. Appellant should file the request by facsimile transmission to 571-273-8300 or through online filing using EFS-WeB. Information about EFS-Web can be found at http://www.uspto.gov/patents/process/file/efs/index.jsp

No, pursuant to 37 CFR § 1.26(a), a change of purpose after the payment of a fee, such as when a party desires to withdraw a patent filing for which the fee was paid, including an application, an appeal, or a request for an oral hearing, will not entitle a party to a refund of such fee. See 37 CFR § 1.26(a) Refunds.

An applicant can reinstate an appeal by filing a second notice of appeal in compliance with 37 CFR 41.31 and a complete new brief in compliance with 37 CFR 41.37. Any fees paid for the notice of appeal, appeal brief, and request for an oral hearing (if applicable) will be applied to the reinstated or second appeal on the same application as long as a final Board decision has not been made on the first appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have increased since they were previously paid, then applicants must pay the difference between the current fee(s) and the amount previously paid.

A docketing notice is a notice issued by the Board assigning an appeal number to your appeal.

Please refer to the Notice of Oral Hearing which sets forth the date, time and hearing room location for your hearing. If you have not received one, one will be issued in due course.

Yes. A request for oral hearing must be filed as a separate paper (i.e. not within the notice or any other paper), and the required fee must be paid, in accordance with 37 CFR § 41.47 within 2 months from the date of the examiner's answer or supplemental examiner's answer. See also Section 1209 of the Manual of Patent Examining Procedure for additional guidance. A PTO Form can be found at http://www.uspto.gov/web/forms/sb0032.pdf. In due course the Board will send a notice of hearing indicating when the oral hearing is scheduled. Further hearing information can be found at http://www.uspto.gov/ip/boards/public_hearing_info.jsp

Yes. A written request for a telephonic or video hearing must be filed with the Board. This can be part of the hearing request, or filed upon receipt of the Board's notice of hearing. The request should be sent by facsimile transmission at 571-273-0299, if sent in response to the notice of hearing.

Ordinarily, a notice of appeal would have been proper when at least one claim has been twice rejected. In this instance, however, since applicant has elected to request reconsideration of the rejection (or further examination) by filing a reply under 37 CFR 1.111 rather than only appealing from the second non-final rejection, the notice of appeal is premature for the following reasons:
(1) The Office has not had the opportunity to consider the reply under 37 CFR 1.111 and issue an Office action in view of the reply (note that this is different than after-final situations where a reply under 37 CFR 1.116 is not entered as matter of right and applicant is appealing from the final rejection);
(2) The status of the claims are uncertain as to whether the examiner would reject the claims again in view of the reply (e.g., the appeal would be unnecessary if the reply places the claims in condition for allowance);
(3) The grounds of rejection are uncertain as to whether the examiner would apply the same grounds of rejection made in the second non-final rejection or make a new ground of rejection with or without using a new prior art reference;
(4) It is unclear which "decision" by the examiner applicant is appealing from because the second non-final rejection may no longer be relevant in view of the reply under 37 CFR 1.111 and the examiner has not issued another decision in response to the reply under 37 CFR 1.111; and
(5) A two-month time period for filing an appeal brief cannot be running against the applicant when applicant cannot determine whether the claims are under rejection again and which grounds of rejection would apply to the claims.

Accordingly, a notice of appeal is prematurely filed, and is thus defective when it is filed after a reply under 37 CFR 1.111 but before the Office issues another Office action in view of the reply. Applicant must wait to file any appeal until the examiner considers the reply and the claims are rejected again. Once the Office action mailed in response to the reply applicant may file another notice of appeal under 37 CFR 41.31. (Similarly, a notice of appeal is defective if it is filed on the same day as the reply under 37 CFR 1.111 or a request for continued examination (RCE) under 37 CFR 1.114. See Questions and Answers C8 and C9.)

Any previously paid fees for the first notice of appeal will be applied to the new notice of appeal. If, however, the appeal fee has increased, applicant is required to pay the difference between the current fee and the amount previously paid at the time of filing the second notice of appeal. Any patent term adjustment determination for a successful appellate review will begin on the date of the new notice of appeal and not on the date of the defective notice of appeal.

If the RCE is accompanied by a proper submission and fee, the Office will enter the RCE and the submission, and reopen prosecution. If the submission is a fully responsive reply that presents an amendment under 37 CFR 1.121, an affidavit or declaration, and/or arguments, the reply would be considered by the examiner. If the reply does not place the application in condition for allowance, the Office will mail an Office action (that may include a non-final rejection or a final rejection as appropriate, but not an advisory action) in response to the reply. The Office will treat the notice of appeal as defective because it was prematurely filed before the examiner considers the RCE submission.

The Office will treat the reply under 37 CFR 1.111. For example, if the reply is a fully responsive reply to the second non-final rejection that presents an amendment under 37 CFR 1.121, an affidavit or declaration, and/or arguments, the reply would be entered and considered by the examiner. If the reply does not place the application in condition for allowance, the Office will mail an Office action (that may include a non-final rejection or a final rejection as appropriate, but not an advisory action) in response to the reply. The Office will treat the notice of appeal as defective because it was prematurely filed before the examiner considers the reply under 37 CFR 1.111.

Yes, the examiner may make the next Office action final unless the examiner introduces a new ground of rejection that is neither necessitated by the applicant's amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP 706.07(a).

If the reply is not fully responsive to the new ground of rejection, but the reply is bona fide, examiner should provide a 30-day or 1-month time period, whichever is longer, for appellant to complete the reply pursuant to § 1.135(c). If the reply is non-bona fide (e.g., does not address the new ground of rejection by presenting a new argument or amended claims), examiner must sua sponte dismiss the appeal as to the claims subject to the new ground of rejection if the two month time period to reply to the examiner's answer has expired. The examiner should notify the appellant that they have the balance of any remaining time period to correct the non-bona fide reply. Extensions of time under § 1.136(a) are not applicable. 37 CFR 41.39(c). It would be improper for the examiner to sua sponte dismiss the appeal until the time period for reply has expired.

If all of the claims under appeal are subject to the new ground of rejection, the examiner should dismiss the entire appeal by following the procedure set forth in the MPEP 1215 (e.g., if no claims stand allowed, the application is considered as abandoned on the date after the reply or reply brief is due).

If only some of the claims under appeal are subject to the new ground of rejection, the examiner should notify the appellant that the appeal as to the claims subject to the new ground of rejection is dismissed and the claims subject to the new ground of rejection are canceled. The dismissal of the appeal as to some of the claims on appeal operates as an authorization to cancel those claims and the appeal continues as to the remaining claims. Examiner may use the following draft form paragraph to notify the appellant:

Appellant failed to respond to the examiner's answer that includes a new ground of rejection mailed on [1]. Under 37 CFR 41.39, if an examiner's answer contains a rejection designated as a new ground of rejection, appellant must, within two months from the date of the examiner's answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, to address each new ground of rejection, to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection. In view of appellant's failure to file a reply or a reply brief within the time period set forth in 37 CFR 41.39, the appeal as to claims [2] is dismissed, and these claims are canceled. Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.

Examiner Note:
1. In bracket 1, insert the mailing date of the examiner's answer.
2. In bracket 2, insert the claim numbers of the claims subject to the new ground of rejection.
3. In bracket 3, insert the claim numbers of the claims that are not subject to the new ground of rejection.

The examiner may provide a supplemental examiner's answer, with the Technology Center Director's or his or her designee's approval, to respond to the new issue(s) raised in the reply brief. The appellant cannot request that prosecution be reopened after such a supplemental examiner's answer. The appellant may file another reply brief under § 41.41 to any supplemental examiner's answer within 2 months from the date of the supplemental examiner's answer. 37 CFR 41.4(3)(b). Extensions of time under § 1.136(a) are not applicable.

Yes, appellant may include other new issues in a reply brief. Appellant is not limited to responding only to the new rejection or new issue raised in the examiner's answer. However, new or non-admitted amendments/affidavits must not be included. 37 CFR 41.41(a)(2).

You can file a petition to expedite examination of your application by making it "special" under 37 CFR § 1.102. See Section 708.01 of the Manual of Patent Examining Procedure. A fillable form can be found at http://www.uspto.gov/web/forms/sb0028_fill.pdf There may also be special programs to accelerate your application. See for example the Green Technology Pilot Program described at http://www.uspto.gov/web/offices/com/sol/notices/74fr64666.pdf Additional information regarding other permanent and pilot programs for accelerated examination are described at http://www.uspto.gov/ip/global/patents/Worksharing.pdf

Yes. However, the filing of an RCE after a timely filed Request for Rehearing and prior to the Board's decision on the Request for Rehearing will result in a dismissal of the Request for Rehearing. See also MPEP § 706.07(h) and 37 CFR § 1.114(a)(3) for procedures for filing an RCE after a Board decision and before an appeal to a court.

No. Only remands which are in further consideration of a rejection shall provide appellant the right to reopen prosecution under 37 CFR 41.50. An example of a remand in further consideration of a rejection is where the Board has knowledge of a ground of rejection not involved in the appeal and remands the application for consideration of such ground of rejection. Certain remands from the Board will not give the appellant the right to reopen prosecution (e.g., administrative remands, a remand to consider an IDS submitted after the jurisdiction has shifted to the Board and a remand to consider a reply brief not addressed by the examiner).

The current MPEP (Eighth Edition, Second Revision, May 2004) does not include the revised appeal practice. . The revised appeal practice will be incorporated into the next revision of the MPEP.

Yes, with the Technology Center Director's, or his or her designee's, approval.

Example 1: The rejection under 35 USC 103 over A in view of B. The brief argues that element 4 of reference B cannot be combined with reference A as it would destroy the function performed by reference A. The reply brief argues that B is nonanalogous and therefore the two references cannot be combined.

Example 2: Same rejection as Example 1. The brief argues only that the pump means of claim 1 is not taught in the applied prior art. The reply brief argues that the particular retaining means of claim 1 is not taught in the prior art.

Appellant may request to reopen prosecution only if (1) a supplemental examiner's answer is written in response to a remand by the Board; (2) the remand is for further consideration of a rejection; and (3) the remand is on or after the effective date. If the Board does not remand the application to the examiner or the remand is for another reason (e.g., for consideration of a new issue raised in a reply brief), the appellant cannot request that prosecution be reopened under § 41.50(a)(2) in response to a supplemental examiner's answer.

The USPQ link on the patent examiner's toolkit can be used to obtain a West Reporter System citation. Just put the case name in the search box, select "All Collections" in the box, and hit "Go." In the "All Collections Results," in the Parallel Citations (USPQ2d and USPQ) row, hit "Go" to obtain the West Reporter System citation.

The Technology Center Director, or his or her designee would indicate approval of a new ground of rejection (or a supplemental examiner's answer) by stamping or writing "New Ground of Rejection Approved" on the first page of the examiner's answer (or a supplemental examiner's answer) along with the approving person's printed name, signature and the date, or by providing a similar clear indication on the examiner's answer (or a supplemental examiner's answer) that the action has been approved.

Yes, § 41.43 provides that the primary examiner must acknowledge receipt and entry of the reply brief (which is the same procedure as in the former § 1.193(b)(1)). A reply brief that is not filed in compliance with § 41.41(a) (e.g., the reply brief is not timely filed within two months from the date of the examiner's answer or it includes a new or non-entered amendment), however, will not be considered. The examiner will notify the appellant that the reply brief is non-compliant.

Yes, appellant may file a petition under § 1.181 within two months from the mailing of the examiner's answer (see § 1.181(f)). The petition should include reasons why the rejection should be designated as a new ground of rejection. No petition fee is required. Any allegation that an examiner's answer contains a new ground of rejection but not designated as such is waived if not timely (§ 1.181(f)) raised by way of a petition under § 1.181(a). See MPEP 1208.01.

The filing of the petition does not toll any time period running, therefore if appellant wishes to present arguments to address the rejection in the examiner's answer, appellant must also file a reply brief to an examiner's answer within two months from the mailing date of the examiner's answer. If the TC Director or designee decides that the rejection is considered a new ground of rejection, the examiner would be required to send a corrected examiner's answer that identifies the rejection as a new ground of rejection in a separate heading in the "Grounds of Rejection to be Reviewed on Appeal" and "Grounds of Rejection" sections of the examiner's answer and include the approval of the TC Director or designee. The appellant may then file a request that the prosecution be reopened by filing a reply under § 1.111, or a request that the appeal be maintained by filing a reply brief or resubmitting the previously-filed reply brief, within two months from the mailing of the corrected examiner answer.

No, the entire appeal should not be dismissed if there are other claims on appeal that are not subject to the new ground of rejection. Section 41.39(b) provides only for dismissal of the appeal as to the claims subject to the new ground of rejection. See F3 regarding non-responsive replies.

Yes, the entire appeal will be dismissed if all of the claims under appeal are subject to the new ground of rejection. The examiner should follow the procedure set forth in MPEP 1215, e.g., if there are no allowed claims, the application would be abandoned.

No, if appellant files a reply in compliance with § 1.111 in response to an examiner's answer that contains a new ground of rejection, the examiner must reopen the prosecution by entering and considering the reply.

No, such a rejection will not be considered a new ground of rejection in an examiner's answer. If such a rejection is included in an examiner's answer, the examiner will not be required to obtain the approval of the TC Director or designee, and appellant will not have the right to request that prosecution be reopened.

Yes, the examiner may provide a copy of the claims involved in the appeal in an appendix to the examiner's answer, or object to the appeal brief and require appellant to provide the claims appendix.

The examiner should fully explain how the limitations of the independent claim are rejected and address the appellant's arguments regarding the dependent claim.

Yes, the examiner should check the claims presented in the claims appendix to the extent that the examiner has a reasonable assurance that the correct claims are set forth in the appendix.

Yes, § 41.31 provides that an 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 for reply provided in the non-final Office action.

If appellant wishes to file a second appeal, appellant must file a second notice of appeal and an appeal brief in compliance with § 41.37(c)(1). Once the notice of appeal and appeal brief fees have been paid, however, a second set of notice of appeal and appeal brief fees will not be required except if a final Board decision has been made on the first appeal. SeeRules of Practice Before the Board of Patent Appeals and Interferences, 69 Fed. Reg. 49959 [PDF], 49975 (August 12, 2004) (final rule)), answer to Comment 44. If, however, the fees set forth in 37 CFR 41.20 have increased since they were previously paid, then applicants must pay the difference between the current fee(s) and the amount previously paid.

Yes. The examiner must notify applicant as to whether or not the paper is entered for purposes of appeal.

Such an affidavit or other evidence will not be entered for purposes of appeal since it does not overcome all rejections under appeal. 37 CFR 41.33(d)(1).

Section 1.116 applies in this situation. Such an amendment filed after a final action is not entered as a matter of right. It may be admitted if it cancels claims or complies with any requirement of form expressly set forth in a previous Office action; presents rejected claims in better form for consideration on appeal; or amends the specification, including claims, upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.

Filed after a final rejection, but before or on the date of filing a notice of appeal Filed after the date of filing a notice of appeal, but prior to the date of filing an appeal brief Filed on or after the date of filing an appeal brief
Amendments May be admitted only to:
* Cancel claims;
* Comply with any requirement of form expressly set forth in a previous action;
* Present rejected claims in better form for consideration on appeal; or
* Amend the specification or claims upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.
See § 1.116(b).
May be admitted as provided in § 1.116(b). See § 41.33(a) and previous column. May be admitted only to:
* Cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding; or
* Rewrite dependent claims into independent form.
See § 41.33(b).
Affidavits or Other evidence May be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented. See §1.116(e). May be admitted if it:
* Overcomes all rejections under appeal; and
* Upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented.
See §41.33(d)(1).
Affidavits or other evidence may not be admitted. See §41.33(d)(2).

The term, "other evidence," includes: declarations and exhibits, but it does not include information disclosure statements (IDS).

37 CFR 1.111 would apply to such an amendment. 37 CFR 1.116 would not apply since it is limited to amendments and affidavits or other evidence filed after final action and prior to or with any appeal. If the amendment were filed after a notice of appeal, 37 CFR 41.33 would apply.

Time period for filing Are extensions of time under
§ 1.136(a) available for patent applications
Are extensions of time under
§ 1.136(b) available for patent applications?
Are extensions of time under
§ 1.550(c) available for ex partereexamination proceedings?
Appeal brief Two (2) months from the receipt date of a notice of appeal (see § 41.37(a)(1)). Yes, up to five (5) months after the two month time period for filing the brief (see § 41.37(e)). Yes (see § 41.37(e)). Yes (see § 41.37(e)).
Amended appeal brief filed in response to a notice of non-compliant appeal brief Thirty (30) days or one (1) month, whichever is longer, from the date of mailing a notice of non-compliant appeal brief (see § 41.37(d)). Yes, up to five (5) months after the 30 days or 1 month time period for filing the amended brief (see § 41.37(e)). Yes (see § 41.37(e)). Yes (see § 41.37(e))
A reply under §1.111 or a reply brief in response to a new ground of rejection in an examiner's answer Two (2) months from the date of mailing of the examiner's answer (see § 41.39(b)). No (see § 41.39(c)). Yes (see § 41.39(c)). Yes (see § 41.39(c))
A reply brief under §41.41 or §41.43 Two (2) months from the date of mailing of the examiner's answer (see § 41.41(a)(1) or § 41.43(b)). No (see § 41.41(c) or § 41.43(c)). Yes (see § 41.41(c) or §41.43(c)) Yes(see § 41.41(c) or §41.43(c))
A reply under §1.111 or a reply brief in response to a supplemental examiner's answer written in response to a remand by the Board for further consideration of a rejection under §41.50(a)(2). Two (2) months from the date of mailing of the supplemental examiner's answer (see § 41.50(a)(2)). No (see § 41.50(f)). Yes (see § 41.50(f)). Yes (see § 41.50(f)).

37 CFR 1.136(b) provides that when a reply cannot be filed within the time period set for such reply and § 1.136(a) is not available, the period for reply will be extended only for sufficient cause and for a reasonable time specified. Any request for an extension of time under § 1.136(b) must be filed on or before the day on which such reply is due, but the mere filing of such a request will not effect any extension.

37 CFR 1.550(c) provides that the time for taking any action by a patent owner in an ex parte reexamination proceeding will be extended only for sufficient cause and for a reasonable time specified. Any request for an extension of time must be filed on or before the day on which such reply is due, but the mere filing of such a request will not effect any extension.

No, appellant may not request that prosecution be reopened under § 41.50(a)(2)(i) in response to the supplemental examiner's answer since the Board remanded the application before the effective date. Appellant may request that prosecution be reopened in response to a supplemental examiner's answer written in response to the remand by the Board, only if: (1) the remand is on or after the effective date, and (2) the remand is for further consideration of a rejection. The Board should indicate in the remand if § 41.50(a)(2)(i) applies. Thus, appellant may not request that prosecution be reopened under § 41.50(a)(2)(i) if the remand is for another reason.

No, the Office will accept an appeal brief filed before September 13, 2004, that complies with either former 37 CFR 1.192(c) or new 37 CFR 41.37(c), even if the fee for the brief was timely filed on or after September 13, 2004.

Yes, appellant may reinstate the appeal by filing a reply brief that addresses the new ground of rejection. The appeal can also be reinstated by filing a complete new brief in compliance with 37 CFR 41.37. If instead of the Office action being mailed prior to September 13, 2004, the Office action was mailed on or after September 13, 2004, appellant cannot reinstate the appeal by filing a reply brief that addresses the new ground of rejection but instead can only be reinstated by filing a complete new brief in compliance with 37 CFR 41.37.

The date of receipt by the Office (or date of deposit with the USPS as set forth in 37 CFR 1.10) of the notice of appeal will be used as the date of filing the notice of appeal as set forth in 37 CFR 41.37(a). See MPEP § 512. The brief is required to be filed within two months from the date of filing the notice of appeal. The time period allowed for reply to the action from which the appeal was taken is no longer relevant. Appellant may petition for extensions of time under 37 CFR 1.136(a) for patent applications or 37 CFR 1.550(c) for reexamination proceedings.

No, an amended appeal brief, based on an appeal brief originally filed prior to September 13, 2004, would be acceptable if it complies with either former § 1.192 or § 41.37(c), regardless of when the Office mailed a Notice requiring correction of the noncompliant appeal brief.

Any affidavit or other evidence filed after a final rejection, or an appeal, on or after the effective date, will be subject to the revised or new rules (i.e., the revised § 1.116 or new § 41.33).

Yes, an examiner's answer mailed on or after September 13, 2004 may include a new ground of rejection (with Technology Center Director or designee approval) in compliance with § 41.39. Any examiner's answer mailed before September 13, 2004, however, may not include a new ground of rejection. See former § 1.193.

Yes, the examiner may provide a supplemental examiner's answer (with Technology Center Director or designee approval) if it is mailed on or after September 13, 2004 in response to any new issue raised in a reply brief, even if the reply brief was filed before September 13, 2004. Appellant may file another reply brief in compliance with § 41.41 to reply to the supplemental examiner's answer within two months from the date of mailing of the supplemental examiner's answer. Extensions of time under § 1.136(a) are not applicable to the two-month time period.

Yes, a brief filed before September 13, 2004 that is compliant with the new § 41.37(c) will be acceptable.

Appellant must file the second appeal brief (in compliance with the format and content requirements of § 41.37(c)) within two months from the date of filing the second notice of appeal, even if the first notice of appeal and the first brief were filed before the effective date. The two month time period is extendable under the provisions of § 1.136 for patent applications and § 1.550(c) for ex parte reexamination proceedings. See § 41.37(e).

Yes, extensions of time under § 1.136(a) are required for filing an RCE or amendment after two months from the filing of the notice of appeal, even if the RCE or amendment is filed within the three months from the mailing of the action from which the appeal was taken.

Yes, any appeal brief filed on or after September 13, 2004 must be in compliance with the requirements set forth in § 41.37(c) and be accompanied by the appropriate fee under § 41.20(b)(2). If the brief does not comply with § 41.37(c), an amended brief will be required under § 41.37(d).

Exception: If the appeal brief is filed with a certificate of mailing or transmission under § 1.8 and the date on the certificate of mailing or transmission is before September 13, 2004, the appeal brief may comply with either former § 1.192 or new § 41.37, even if the appeal brief is received by the Office on or after September 13, 2004.

Appellant can notify the Board of recent related court proceeding/appeal/interference by filing a communication listing the caption of the case, proceeding number and decision date and including a copy of the decision. If you need further information, contact either Dale Shaw or Kimberly Jordan at 571-272-9797.

Board statistical information is available at the following link: http://www.uspto.gov/ip/boards/bpai/stats/index.jsp

If the notice of appeal is filed before September 13, 2004, the time period for filing an appeal brief will be the time period set forth in former § 1.192(a) which provides that the appellant must file an appeal brief: (1) within two months from the date of filing of the notice of appeal; or (2) within the time allowed for reply to the action from which the appeal was taken, if such time is later.

The time period set forth in former § 1.192(a) also applies if the notice of appeal is filed with a certificate of mailing or transmission in compliance with § 1.8 and the date on the certificate of mailing or transmission is before the effective date of September 13, 2004, but the notice of appeal is received by the Office on or after September 13, 2004. The two month time period will begin on the date of receipt of the notice of appeal.

If you received a Notice of Non-Compliance regarding your appeal brief, the relevant contact information for the paralegal or supervisory paralegal is included on the Notice. If you are unable to contact either, contact Merrell Cashion at 571-272-9797. For reexamination appeal briefs, please contact Merrell Cashion.

Appellant can notify the Board of recent decisions by filing a communication listing the caption of the case, proceeding number and decision date and including a copy of the decision. An example of such circumstances would be where a pertinent decision of a court or other tribunal was not published until after the brief or reply brief was filed. If you need further information, contact either Dale Shaw or Kimberly Jordan at 571-272-9797.

Information on the federal register notices concerning the streamlined brief review can be found at the following link: http://www.uspto.gov/ip/boards/bpai/procedures/guidance_noncompliant_briefs.jsp

Information on the brief review checklists can be found at the following link: http://www.uspto.gov/ip/boards/bpai/procedures/guidance_noncompliant_briefs.jsp

Appellant must notify the Board of changes in the real party in interest by filing a communication indicating the new real party in interest as well as when the change took effect. The identification of the real party in interest allows members of the Board to comply with ethics regulations associated with working in matters in which the member has a financial interest to avoid any potential conflict of interest. If you need further information, contact either Dale Shaw or Kimberly Jordan at 571-272-9797.

Yes, the BPAI has a laptop (does not have internet capabilities - any information will need to be stored on a flashdrive or CD), projector, and screen. You must request the audio visual equipment in writing at least three days in advance of the scheduled hearing, so it can be set up prior to your hearing. No new evidence is permitted. You can send your request by facsimile transmission to 571-273-0299.