Frequently Asked Questions

How can I file an 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.

Back to top

How do I file a notice of appeal?

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.

Back to top

How do I file 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

Back to top

Can I present an oral argument (oral hearing) for my appeal?

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

Back to top

Can I request a video or telephonic hearing? 

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.

Back to top

I want to have a PowerPoint presentation; does the Board have equipment that can be set up so that I can make the presentation? 

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.

Back to top

When is my Oral Hearing? 

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

Back to top

Can an oral hearing fee be refunded?

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.

Back to top

I received an Order Denying Oral Hearing.  How do I request reconsideration and/or petition this order? 

You will need to file a petition under 37 CFR § 41.3 and the requisite fee under 37 CFR § 41.20(a) requesting that the hearing request be accepted.  Such petition is due within 14 days from  the Order Denying Oral Hearing or other time period set by the Board in writing.  See 37 CFR § 41.3(e).   The Chief Administrative Patent Judge or his/her designee will decide the petition.

Back to top

What is a docketing notice?

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

Back to top

I received from the Board a notice docketing my appeal; how can I get my appeal expedited?

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

Back to top

Where can I find the federal register notices concerning the streamlined appeal brief review process?

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

Back to top

Where can I find the brief review checklists used in the streamlined brief review process?

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

Back to top

If there is a change in the real party in interest after the brief is filed, how can I notify the Board about it?

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.

Back to top

Whom do I contact concerning questions regarding a "Notice of Non-Compliance" regarding an appeal brief?

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.

Back to top

How can I withdraw my appeal? 

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 through EFS-WeB. Information about EFS-Web can be found at http://www.uspto.gov/patents/process/file/efs/index.jsp

Back to top

Can I file a Request for Continued Examination (RCE) before the Board’s decision? 

Yes. Applicants should advise the Board when an RCE is filed in an application containing an appeal awaiting decision. Failure to exercise appropriate diligence in this matter may result in the Board refusing an otherwise proper request to vacate its decision.  If the appeal has not been decided, the filing of the RCE will result in dismissal of the appeal.  See MPEP §§ 1215.01, 1215.02,  1215.03.  See also MPEP § 706.07(h) for procedures for filing an RCE after appeal but before Board decision.

Back to top

Can I file a Request for Continued Examination (RCE) after the Board’s decision? 

Yes.  Appellant may file an RCE within the 2 month period after the decision is entered.  See MPEP §§ 1215.01, 1215.02,  1215.03.  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.

Back to top

I filed a request for rehearing of the Board's decision. Can I file a Request for Continued Examination (RCE) before the decision on my Request for Rehearing? 

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.

Back to top

If there is a recent decision made public after the brief is filed, how can I notify the Board about it?

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.

Back to top

I just became aware of a related court proceeding/appeal/interference, how can I notify the Board?

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.

Back to top

Where can I find statistics concerning the Board’s performance?

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

Back to top

Where can I find the Board's opinions?

• Board precedential opinions are available at the following link:  http://www.uspto.gov/ip/boards/bpai/decisions/prec/index.jsp.
• Board informative opinions are available at the following link: http://www.uspto.gov/ip/boards/bpai/decisions/inform/index.jsp
• Other Board opinions (if the file is open to the public) are available at http://des.uspto.gov/Foia/BPAIReadingRoom.jsp

Back to top