1208.01 Fee for Forwarding an Appeal to the Board [R-07.2022]
37 CFR 41.45 Appeal forwarding fee
- (a) Timing. Appellant in an application or ex parte reexamination proceeding must pay the fee set forth in § 37 CFR 41.20(b)(4) within the later of two months from the date of either the examiner’s answer, or a decision refusing to grant a petition under § 1.181 of this chapter to designate a new ground of rejection in an examiner’s answer.
- (b) Failure to pay appeal forwarding fee. On failure to pay the fee set forth in § 37 CFR 41.20(b)(4) within the period specified in paragraph (a) of this section, the appeal will stand dismissed.
- (c) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
The examiner’s answer should provide notice that the appeal forwarding fee must be paid within the requisite time period or the appeal will stand dismissed. See form paragraphs 12.279 and 12.279.01. It is preferable that appellants pay this fee at the same time any reply brief is filed.
Effective March 19, 2013, the fee for filing an appeal brief in an application or ex parte reexamination was reduced to $0 and a new fee was added for forwarding the appeal to the Board after the mailing of an examiner’s answer. Failure to pay this appeal forwarding fee results in the dismissal of the appeal. In the event that appellant fails to timely pay the fee, the appeal is dismissed by rule and the examiner should proceed as indicated in MPEP § 1215 regardless of whether a separate paper is mailed dismissing the appeal. The requirement to pay the appeal forwarding fee is waived when the appeal brief fee was paid before March 19, 2013. As long as the waiver is in effect, applicants having paid the appeal brief fee before March 19, 2013 will not be required to pay the appeal forwarding fee. This waiver only applied in an appeal in which the appeal brief and its corresponding appeal brief fee were filed before March 19, 2013 and where applicant seeks to reinstate an appeal in such application prior to the Board issuing a decision on the appeal filed prior to March 19, 2013.
The appeal forwarding fee is premature if the fee is filed prior to the mailing of the examiner’s answer. In addition, the Office cannot accept a general authorization to pay the appeal forwarding fee because appeal fees are found in 37 CFR 41.20 and not 37 CFR 1.16 to 1.18. See 37 CFR 1.25(b). Applicant should be clear in its authorization that the fee is directed to payment of the appeal forwarding fee. It is suggested that the applicant consider filing form PTO/AIA/34 (Certification and Transmittal of Appeal Forwarding Fee). An applicant who files a reply brief and authorizes the Office to charge any fees related to the submission of this paper will not have authorized the Office to charge the appeal forwarding fee because the submission of the reply brief and submission of the appeal forward fee are not required to be submitted at the same time.
As an example, suppose the applicant filed an appeal brief, including payment of the appeal brief fee, on March 18, 2013 and a final Board decision issued in the appeal on March 16, 2015. Following the Board decision the applicant timely files a request for continued examination under 37 CFR 1.114 on May 17, 2015. After prosecution of the RCE before the examiner, the applicant files a new notice of appeal and an appeal brief. The applicant would be required to pay the appeal forwarding fee within the period specified in 37 CFR 41.45(a) to continue with the appeal.
The appeal forwarding fee does not apply to inter partes reexamination appeals.