Ex parte appeals to the Board, and documents relating thereto filed prior to a docketing notice from the Board, are reviewed to determine the business unit of the Office responsible for their processing. Appeal documents, such as the notice of appeal, appeal brief, pre-appeal brief request for review (See MPEP § 1204.02), and request for extension of time to file the brief, are processed by the Patent Appeal Center.
The Patent Examining Corps has jurisdiction over the application to consider the appeal brief, conduct an appeal conference, draft an examiner’s answer, and decide the entry of amendments, evidence, and information disclosure statements filed after final or after notice of appeal. Jurisdiction over the proceeding passes to the Board upon the filing of a reply brief under 37 CFR 41.41 or the expiration of the time in which to file such a reply brief, whichever is earlier. See 37 CFR 41.35.
The Patent Appeal Center will forward the application to the Board after the jurisdiction has transferred to the Board and, where waiver of the appeal forwarding fee doesn’t apply, the Patent Appeal Center has processed the appeal forwarding fee. Even if applicant has filed a reply brief, the appeal will not be forwarded to the Board prior to the payment of the appeal forwarding fee.
Notices of appeal, appeal briefs, and reply briefs are reviewed for compliance with the appropriate rules prior to being forwarded to the examiner. As such, examiners should not identify these documents as defective or noncompliant for failure to comply with procedural rules. In the rare situation where a substantial defect in an appeal document is identified after these reviews, the examiner should contact the Patent Appeal Center to determine whether corrective action should be taken.
The Patent Appeal Center may return the application to the examiner for corrections to the examiner’s answer or other outgoing documents when appropriate.
I. DOCKETING PROCEDURE
The Board’s docketing procedure is designed to provide notification to the appellant within one month of receipt from the Patent Appeal Center of an appealed application at the Board that (A) the appeal has been received at the Board and docketed, or (B) the appeal is being remanded to the examiner for attention to unresolved matters.
If the appeal is ready for docketing three events will occur:
- (A) an appeal number will be assigned;
- (B) the Board will issue a docketing notice; and
- (C) the appeal will be assigned either to a master docket for subsequent reassignment to a panel or directly to a panel of at least three Board members.
If the appeal cannot be docketed due to matters requiring further attention in the patent examining corps, the appeal will be remanded to the patent examining corps with an order indicating why the appeal cannot be docketed. Notification of the remand, in the form of a copy of the order, will be mailed to the appellant.
The docketing notice or order indicating why the appeal cannot be docketed will provide the appellant and the examiner with notification that (A) the appeal is under the jurisdiction of the Board; or (B) that the appeal is being returned to the patent examining corps to resolve matters requiring attention prior to decision of the appeal. Thus, the appellant will know to which organization to look for the next communication in the appealed application.
II. “SPECIAL CASE”
If the applicant remains diligent, an application for patent that once has been made special and advanced out of turn by the United States Patent and Trademark Office (Office) for examination will continue to be special throughout its entire course of prosecution in the Office, including appeal, if any, to the Board. See MPEP § 708.01.
A petition to make an application special after the jurisdiction of the appeal has been transferred to the Board may be addressed to the Board. Thus, no such petition will be granted unless the brief has been filed and applicant has made the same type of showing required by the Director under 37 CFR 1.102. Therefore, diligent prosecution is essential to a favorable decision on a petition to make special.