Preface
This brief note is not legal advice and is for educational purposes only.
- Who can file a notice of appeal to the PTAB (Patent Trial and Appeal Board)?
- What's required?
- What are the time limits?
Brief Discussion
Here’s a brief note on these issues.
Filing an ex parte appeal to the PTAB (Patent Trial and Appeal Board)
| Who can file? | What's required? | Time to file Notice of Appeal? | Misc |
|---|---|---|---|
| A patent applicant where any claim has been rejected twice.†37 CFR 41.31(a)(1) | 1) Notice of appeal (form PTO/AIA/31) 2) Appeal fee § 37 CFR 41.20(b)(1) | Within time period of § 37 CFR § 1.134 and 1.136 (time extensions) | See note at ‡ for maximum time period. See MPEP 1204 II |
| A patent owner appealing an ex parte reexamination final rejection. 37 CFR 41.31(a)(3) | 1) Notice of appeal (form PTO/AIA/31) 2) Appeal fee § 37 CFR 41.20(b)(1) | Within time period of § 37 CFR § 1.134 and 1.550(c) (time extensions) | See MPEP 1204 III. and MPEP 2273 |
Note that if the application is a continuation and in the parent the claim was rejected once, then if it’s rejected in the continuation once, you can appeal. (You can’t file an RCE for a twice rejected claim and then immediately go to appeal, you need to wait for another rejection.)
Note there may be a strategic reason why you want to file as late as possible or delay filing an appeal brief after a notice of appeal. First, wait till the last day to file the notice of appeal which will generally be at the end of a month period or month period time extension. Assume for this example that you received a final that had a shortened statutory period of 3 months. You can wait till the 6 month deadline by filing a 3 month time extension (and paying) and filing a Notice of Appeal (and paying) on that date Note that if that date falls on a Saturday, Sunday, or Federal Holiday in Washington DC then it is due the next business day (see MPEP 710.01(a), MPEP 710.05, 35 USC 21(b), 37 CFR 1.7). NOW smail (smail mail is regular USPS mail (slow as a snail)) the fees and notice of appeal via the U.S. Postal Service with sufficient postage as first class mail because the response is timely filed if sent with a Certificate of Mailing under 37 CFR 1.8 (use form PTO/SB/92) (see 37 CFR 1.8(a)(1)), HOWEVER the date for starting the 2 month period for filing the appeal brief starts when the USPTO receives the notice of appeal (37 CFR 41.37(a)) NOT when you sent it (see 37 CFR 1.8 “The actual date of receipt will be used for all other purposes.”) This smail delay will buy you let’s call it delta days (Δ days). Now the appeal brief is due 2 months after the USPTO receives the notice of appeal (41.37(a)) AND you can buy up to 5 months extension to file the appeal brief (41.37(e)). So the appeal brief is not due for 6 months + 2 months + 5 months + Δ days (if any) = 13 months + Δ days from the final. Hopefully within this time period your strategic reason will have resolved.
Conclusion
If done timely an applicant or patent owner can appeal to the PTAB. For an applicant the time to file an appeal brief can be extended by paying time extensions and smailing resulting in at least 13 months from a final rejection (or twice rejected claim).
