Appeal filing
Q. How do I know which judges will decide my appeal?
Q. How do I know the Board received my appeal?
Q. Do I file documents for an appeal with the Board?
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Q. When can I file an appeal?
Q. How long do I have to file an appeal?
Q. Can I appeal an objection?
Q. What information should I include in an Appeal Brief?
(i) identification of the real party in interest;
(ii) identification of related appeals, interferences, and trials;
(iii) a summary of claimed subject matter;
(iv) arguments as to why the examiner’s rejection was in error; and
(v) a listings of the claims subject to appeal.
Further details as to the requirements for each of these sections may be found at MPEP 1205.
If an appellant submits a brief lacking one or more of the above sections, the Office will notify the appellant of the reasons for non-compliance and give the appellant a time period within which to file an amended brief. If the appellant does not file an amended brief that overcomes the reasons for non-compliance within the set time period, the appeal will be dismissed.
Timing of an appeal
Q. How long does an appeal take?
Q. Is there a way to expedite an appeal?
After notice of appeal
Q. Can I have an interview with the examiner after filing a notice of appeal?
Q. Do I have to file a reply brief?
If an appellant fails to respond to an examiner’s answer containing a new ground of rejection, the appeal may be dismissed regarding the claims subject to the new grounds of rejection. When all appealed claims are subject to the new ground of rejection, the entire appeal may be dismissed.
Q. How long do I have to file a reply brief?
Extensions of time are generally not permitted, but may be granted when a reply cannot be filed within two months. In such cases, the period for submitting a reply brief will be extended for sufficient cause and for a reasonable time specified. The request for an extension must be filed by the date the reply brief is due. Filing a request for an extension does not mean the extension has been granted.
Q. If I do not file a reply brief, is there anything else I must do before my appeal is submitted to the Board?
Further, if you wish to request an oral hearing, such a request must also be made by the due date for the reply brief.
Q. What should I include in a reply brief when the examiner’s answer does raise any new grounds of rejection?
Q. What should I include in a reply brief when the examiner made one or more new grounds of rejection in the examiner’s answer?
When an appellant requests the appeal be maintained, the reply brief must address each new ground of rejection. The reply brief cannot include any claim amendments, affidavits, or other evidence.
When an appellant requests that prosecution be reopened, an appellant may file claim amendments, affidavits, or evidence responsive to the new ground(s) of rejection.
Q. Can I amend claims after filing a notice of appeal?
Amendments filed after a notice of appeal, but before the appeal brief, may be filed to:
Cancel claims.
Comply with any requirement of form expressly set forth in a previous action by the examiner.
Present rejected claims in better form for consideration on appeal.
Amend the specification or claims upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.
Amendments filed on or after an appeal brief may be filed to:
- Cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding.
- Rewrite dependent claims in independent form.
Q. Can I submit affidavits and/or new evidence with my appeal brief and/or reply brief?
Examiner’s answer
Q. May the examiner make a new rejection in an examiner's answer?
Q. What should I do if I think the examiner made a new ground rejection in the examiner's answer?
Hearing
Q. Do I have to travel to the Office if I want a hearing?
Q. Will the examiner be at the hearing?
Q. Can I bring a witness to a hearing? Can I bring evidence?
Q. How do I request a hearing?
Q. Will a hearing be held in every instance if requested?
Q. How will I find out when the hearing will take place?
Q. Can a hearing be rescheduled?
Q. If I request a hearing, can I later decide not to attend?
Q. Can I present slides at the hearing?
Q. Will a written transcript of the hearing be available?
Q. Who can attend the hearing?
Appeal outcome
Q. If I win on appeal, do I get a patent immediately?
Q. What happens if I lose on appeal?
Q. Can the Board raise a new ground of rejection in an appeal decision?
Contacting PTAB
Q. Can I contact the judges for help with an appeal?
If you have questions about preparing or filing documents on appeal, you can contact the examiner for the application or the Pro Se Assistance Program at 1 866 767 3848. If you have questions about a docketed appeal, i.e., the appeal has an appeal number, you may contact the Board’s Appeals Division via telephone at 571-272-9797 or by mail at the following address:
Appeal Related Matters
Patent Trial and Appeal Board
US Patent and Trademark Office
PO Box 1450
Alexandria, Virginia 22313-1450