Appeals, petitions and revival
This area tests the route for review (appeal to the Board for rejections, petition to the Director for procedural rulings), the deadlines of an ex parte appeal, and how an abandoned application is brought back. Hold onto one idea: appeal periods count from the paper that starts them, most are not extendable under 1.136(a), and revival needs unintentional delay throughout.
Appeals, petitions, issue and post-issuance6 min read6 sections
The Board decides rejections on the merits under 35 U.S.C. 134; the Director, through delegated officials, decides procedural matters on petition. Ordinarily an objection is petitionable and a rejection is appealable, and each forum declines the other's questions (MPEP 1201). Restriction requirements, premature finality, refusal to enter an amendment and holdings of abandonment all go by petition. Because a refused amendment is petitionable, it is not part of the record the Board reviews (MPEP 1204.04).
A petition under 37 CFR 1.181 must state the facts and the relief sought, and is normally due within two months of the action complained of; that period is not extendable. Filing a petition never stops the clock on a pending reply (37 CFR 1.181(f); MPEP 1002). Where an applicant asks the examiner to reconsider a requirement, the adverse repeat action starts the two months. Rule 1.182 covers situations not otherwise provided for, and Rule 1.183 lets the Director waive a rule (never a statute) in an extraordinary situation; both carry the 1.17(f) fee.
An applicant may appeal once any claim has been twice rejected, final or not, and the two rejections may span a parent and a continuation (MPEP 1204). A notice of appeal filed with, or before the Office considers, a 1.111 reply to a non-final rejection is premature. The brief follows two months after the Office receives the notice, and a certificate of mailing date does not move that start date (MPEP 1205.01). After the brief, only claim cancellations and rewriting dependent claims in independent form can be admitted (37 CFR 41.33(b)).
| Step | Deadline | Extension |
|---|---|---|
| Notice of appeal | Period for reply to the action appealed | 1.136(a) |
| Appeal brief | 2 months from receipt of the notice |
Every note. Every question. One pass.
4 more sections of this note are part of Premium.
From about US$14.92/mo on the Until-you-pass pass (12 months)
| 1.136(a) |
| Reply to new ground in answer | 2 months from the answer | 1.136(b) only |
| Reply brief; forwarding fee | 2 months from the answer | 1.136(b) only |
| Request for oral hearing | Earlier of 2 months from answer or reply brief date | 1.136(b) only |
| Rehearing; reply to Board new ground | 2 months from the decision | 1.136(b) only |
| Federal Circuit or E.D. Va. | 63 days from the decision | Director, 37 CFR 90.3(c) |
Jurisdiction passes to the Board when the reply brief is filed or the time for it expires, and papers such as an IDS filed later are held in abeyance (37 CFR 41.35). If the brief is never filed, the appeal is dismissed; the application survives only if a claim stands allowed, and claims objected to for dependency fall with the rejected claims (MPEP 1215.04).
