1205.01 Time for Filing Appeal Brief [R-10.2019]

Created On
byChhabra Law Firm

37 CFR 41.37(a) provides 2 months from the date of the notice of appeal for the appellant to file an appeal brief and the appeal brief fee set forth in 37 CFR 41.20(b)(2). Any brief in an application or an ex parte reeexamination proceeding filed on or after March 19, 2013 need not be accompanied by an appeal brief fee as the 37 CFR 41.20(b)(2) fee amount on or after that date is set at $0.

The usual period of time in which appellant must file his or her brief is 2 months from the date of the notice of appeal. The Office date of receipt of the notice of appeal (and not the date indicated on any Certificate of Mailing under 37 CFR 1.8) is the date from which this 2-month time period is measured. See MPEP § 512. If the notice of appeal is filed in accordance with 37 CFR 1.10 using the Priority Mail Express® service of the United States Postal Service (USPS), the date of deposit with the USPS is the date from which this 2-month time period is measured because the date of deposit shown by the “date accepted” on the Priority Mail Express® label or other official USPS notation is considered to be the date of receipt. See MPEP § 513.

37 CFR 41.37(a) does not permit the brief to be filed within the time allowed for reply to the action from which the appeal was taken even if such time is later. Once appellant timely files a notice of appeal in compliance with 37 CFR 41.31, the time period for reply set forth in the last Office action is tolled and is no longer relevant for the time period for filing an appeal brief. For example, if appellant filed a notice of appeal within one month from the mailing of a final Office action which sets forth a 3-month shortened statutory period for reply, and then the appellant filed an appeal brief after 2 months from the filing date of the notice of appeal, a petition for an extension of time for one month would be required, even if the brief was filed but within three (3) months from the mailing of the final action. Similarly, if the appellant files a request for continued examination (RCE) under 37 CFR 1.114, instead of an appeal brief, after two (2) months from the filing date of the notice of appeal a petition for an extension of time would be required, even if the RCE was filed within three (3) months from the mailing of the final action.

This 2-month time period for a patent application may be extended under 37 CFR 1.136(a), and if 37 CFR 1.136(a) is not available, under 37 CFR 1.136(b) for extraordinary circumstances. In an ex parte reexamination proceeding, the time period can be extended only under the provisions of 37 CFR 1.550(c). See also MPEP § 2274.

In the event that the appellant finds that they are unable to file a brief within the time period allotted by the rule, they may file a petition for extension of time under 37 CFR 1.136(a) with the appropriate fee. Additional time in excess of 5 months will not be granted unless extraordinary circumstances are involved under 37 CFR 1.136(b). Where a proper petition for extension of time is filed, the new due date is computed from the receipt date of the notice of appeal, as opposed to the original due date. For example, if a notice of appeal’s receipt date is December 30, the appeal brief would be due on the following February 28 (or 29, if it is a leap year), if not a Saturday, Sunday or federal holiday. If the period for filing an appeal brief is extended by one month the appeal brief would be due on March 30, if not a Saturday, Sunday, or federal holiday.

¶ 12.210 Extension To File Brief – Granted

The request for an extension of time under 37 CFR 1.136(b) for filing the appeal brief under 37 CFR 41.37 filed on [1] has been approved for [2].

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 2, insert the amount of time the extension of time has been approved for.
  • 3. This form paragraph should only be used when 37 CFR 1.136(a) is not available or has been exhausted, such as in litigation reissues or when appellant requests to reopen prosecution or file a reply brief as set forth in 37 CFR 41.39(b) and 37 CFR 41.50(a)(2).

¶ 12.211 Extension To File Brief – Denied

The request for an extension of time under 37 CFR 1.136(b) for filing the appeal brief under 37 CFR 41.37 filed on [1] has been disapproved because no sufficient cause for the extension has been shown.

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. This form paragraph should only be used when 37 CFR 1.136(a) is not available or has been exhausted, such as in litigation reissues or when appellant requests to reopen prosecution or file a reply brief as set forth in 37 CFR 41.39(b) and 37 CFR 41.50(a)(2) .

When an application is revived after abandonment for failure on the part of the appellant to take appropriate action after final rejection, and the petition to revive was accompanied by a notice of appeal, appellant has 2 months, from the mailing date of the Director’s affirmative decision on the petition, in which to file the appeal brief. The time period for filing the appeal brief may be extended under 37 CFR 1.136.

FAILURE TO TIMELY FILE AN APPEAL BRIEF

The appeal ordinarily will be dismissed if the brief is not filed within the period provided by 37 CFR 41.37(a) or within such additional time as may be properly extended. Effective March 19, 2013, the statutory fee for filing an appeal brief was adjusted to $0. As long as the fee under 37 CFR 41.20(b)(2) remains $0, the appeal will not be dismissed for failure to pay the fee.

A brief must be filed to preserve appellant’s right to the appealed claims, notwithstanding circumstances such as:

  • (A) the filing of a petition to invoke the supervisory authority of the Director under 37 CFR 1.181;
  • (B) the filing of an amendment, even if it is one which the examiner previously has indicated may place one or more claims in condition for allowance, unless the examiner, in acting on the amendment, disposes of all issues on appeal;
  • (C) the receipt of a letter from the examiner stating that prosecution is suspended, without the examiner withdrawing the final rejection from which appeal has been taken.

Although failure to file the brief within the permissible time will result in dismissal of the appeal, if any claims stand allowed the application does not become abandoned by the dismissal, but is returned to the examiner for action on the allowed claims. See MPEP § 1215.04. If there are no allowed claims, the application is abandoned as of the date the brief was due. Claims which have been objected to as dependent from a rejected claim do not stand allowed. In an ex parte reexamination proceeding, failure to file the brief will result in the issuance of the certificate under 37 CFR 1.570.

¶ 12.209 Appeal Dismissed – Allowed Claims, Formal Matters Remaining

In view of applicant’s failure to file a brief within the time prescribed by 37 CFR 41.37(a), the appeal stands dismissed and the proceedings as to the rejected claims are considered terminated. See 37 CFR 1.197(b).

This application will be passed to issue on allowed claim [1] provided the following formal matters are corrected. Prosecution is otherwise closed.

[2]

Applicant is required to make the necessary corrections within a shortened statutory period set to expire TWO (2) MONTHS from the mailing date of this letter to avoid ABANDONMENT of the application. Extensions of time may be granted under 37 CFR 1.136 but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133).

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. This form paragraph should only be used if the formal matters cannot be handled by examiner’s amendment. See MPEP § 1215.04.
  • 3. In bracket 2, insert a description of the formal matters to be corrected.
  • 4. Claims which have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected. See MPEP § 1215.04.

If the time for filing a brief has passed and the application has consequently become abandoned, the applicant may petition to revive the application under 37 CFR 1.137, as in other cases of abandonment. See MPEP § 711.03(c). If the appeal is dismissed, but the application is not abandoned because there is at least one allowed claim, the applicant may file a petition to reinstate the claims and the appeal, but a showing equivalent to that in a petition to revive under 37 CFR 1.137 is required. See MPEP § 711.03(c). In addition to the petition and petition fee, appellant must file:

  • (A) A request for continued examination (RCE) under 37 CFR 1.114 accompanied by a submission (i.e., a reply under 37 CFR 1.111) and the fee as set forth in 37 CFR 1.17(e) if the application is a utility or plant application filed on or after June 8, 1995, or a continuing application under 37 CFR 1.53(b) (or a CPA under 37 CFR 1.53(d) if the application is a design application); or
  • (B) An appeal brief and the appeal brief fee to reinstate the appeal. Effective March 19, 2013, the statutory fee for filing an appeal brief in an application or ex parte reexamination proceeding was adjusted to $0. For so long as the fee under 37 CFR 41.20(b)(2) remains $0, the appeal will not be dismissed for failure to pay the fee. A proper brief must be filed before the petition will be considered on its merits.

Where the dismissal of the appeal is believed to be in error, filing a petition, pointing out the error, may be sufficient.