1205.03 Non-Compliant Appeal Brief and Amended Brief [R-10.2019]

The Patent Appeal Center has the responsibility for determining whether appeal briefs filed in patent applications comply with 37 CFR 41.37, and will complete the determination before the appeal brief is forwarded to the examiner for consideration. The determination should be completed within approximately one month from the filing of the appeal brief. If the appeal brief is determined to be compliant with the rules or it contains only minor informalities that do not affect the Office’s ability to render a decision, the Patent Appeal Center will accept the appeal brief and forward it to the examiner for consideration. If the Patent Appeal Center determines that the appeal brief is non-compliant with 37 CFR 41.37 and sends appellant a notice of non-compliant brief requiring a corrected brief, appellant will be required to file a corrected brief within the time period set forth in the notice to avoid the dismissal of the appeal. The Patent Appeal Center will also have the responsibility for determining whether corrected briefs comply with 37 CFR 41.37.

If appellant disagrees with the holding of noncompliance, a petition under 37 CFR 41.3 may be filed. Filing a petition will not toll the time period for reply set in the notice. Appellant must timely reply to the notice or the Office communication that requires an amended brief.

Once an appeal brief is accepted by the Board as in compliance with 37 CFR 41.37, the appeal brief will not later be held as defective by the Patent Appeal Center or the examiner. The Board will not return or remand the application to the examiner for issues related to a non-compliant appeal brief. Furthermore, examiners are not required to review appeal briefs for the purposes of determining whether the appeal briefs comply with 37 CFR 41.37. Accordingly, the Notification of Non-Compliant Appeal Brief (PTOL-462) and form paragraphs for holding an appeal brief defective are no longer available for the examiner to use.

Furthermore, the Patent Appeal Center will correspond directly with the appellant on non-compliant brief issues. Examiners may use form paragraphs 12.249 – 12.279.01 to draft examiner’s answers to respond to appeal briefs filed in any format. In those rare situations where an appeal brief contains serious defects that will prevent the examiner from drafting an examiner’s answer, the primary examiner should report the issue to the Patent Appeal Center.

The patent examining corps has jurisdiction over the application to consider the appeal brief, conduct an appeal conference, decide the entry of amendments, evidence, and information disclosure statements filed after final or after the filing of a notice of appeal, and draft an examiner’s answer until jurisdiction passes to the Board pursuant to 37 CFR 41.35(a). Furthermore, petitions concerning the refusal to enter amendments and/or evidence remain delegated according to MPEP §§ 1002.02(b) and 1002.02(c).