MPEP § 1212 — MPEP § 1212
Current through: 2022-07-01

1212-Board Requires Appellant to Address Matter 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 1200 

 Section 1212 
 

 
 
 
 
 
 1212 Board Requires Appellant to Address Matter [R-08.2017]

 
 37 CFR 41.50 Decisions and other actions by the Board. 

 *****

 
 (d) Request for briefing and information. The Board may order
 appellant to additionally brief any matter that the Board considers to be of
 assistance in reaching a reasoned decision on the pending appeal. Appellant will
 be given a time period within which to respond to such an order. Failure to timely
 comply with the order may result in the sua sponte dismissal of the appeal.
 

 
 *****

 

 37 CFR
 41.50(d) authorizes the Board to require appellant to additionally
 brief any matter that the Board considers to be of assistance in reaching a reasoned
 decision on the pending appeal. This may include, for example: (A) the applicability of
 particular case law that has not been previously identified as relevant to an issue in the
 appeal; or (B) the applicability of prior art that has not been made of record. However,
 consideration of information disclosure statements filed while the Board possesses
 jurisdiction over the appeal will be held in abeyance until the Board's jurisdiction ends.
 See 37 CFR
 41.35(d) .
 

 The rule further provides that the appellant will be given a time period
 within which to respond to the requirement. Extensions of time are only available under
 37 CFR
 1.136(b) . Failure to respond within the time period set by the Board
 may result in dismissal of the appeal.
 

 The making of a requirement under 37 CFR 41.50(d) is discretionary with
 the Board. The authority granted in 37 CFR 41.50(d) does not affect the
 Board’s authority to remand a case to the examiner in a situation where the Board considers
 action by the examiner in the first instance to be necessary or desirable. See
 MPEP §
 1211 . Also, after an appellant has replied to a requirement under
 37 CFR
 41.50(d) , a remand by the Board to the examiner may be appropriate to
 permit the examiner to respond to the appellant’s response to the Board’s order.
 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 1201-Introduction 

 1202-Composition of Board 

 1203-Administrative Handling 

 1204-Notice of Appeal 
 1204.01-Reinstatement of Appeal 

 1204.02-Pre-Appeal Brief Review Request and Conference Pilot Program 

 1204.03-Interviews After Notice of Appeal 

 1204.04-Official Record on Appeal 

 
 

 1205-Appeal Brief 
 1205.01-Time for Filing Appeal Brief 

 1205.02-Appeal Brief Content 

 1205.03-Non-Compliant Appeal Brief and Amended Brief 

 
 

 1206-Amendments and Affidavits or Other Evidence Filed With or After Appeal 

 1207-Examiner’s Answer 
 1207.01-Appeal Conference 

 1207.02-Contents of Examiner’s Answer 

 1207.03-New Ground of Rejection in Examiner’s Answer 
 1207.03(a)-Determining Whether a Ground of Rejection is New 

 1207.03(b)-Petition to Designate a New Ground of Rejection and to Reopen Prosecution 

 1207.03(c)-Appellant's Reply to New Grounds of Rejection 

 
 

 1207.04-Reopening of Prosecution After Appeal 

 1207.05-Substitute Examiner’s Answer 

 
 

 1208-Reply Briefs and Fee for Forwarding Appeal 
 1208.01-Fee for Forwarding an Appeal to the Board 

 
 

 1209-Oral Hearing 

 1210-Actions Subsequent to Examiner’s Answer but Before Board’s Decision 

 1211-Remand by Director or Board 
 1211.01-Remand by Board for Further Consideration of Rejection 

 1211.02-Remand To Consider Amendment 

 1211.03-Remand To Consider Affidavits or Declarations 

 1211.04-Remand by Board for Further Search 

 
 

 1212-Board Requires Appellant to Address Matter 

 1213-Decision by Board 
 1213.01-[Reserved] 

 1213.02-New Grounds of Rejection by Board 

 1213.03-Publication of and Public Access to Board Decision 

 
 

 1214-Procedure Following Decision by Board 
 1214.01-Procedure Following New Ground of Rejection by Board 

 1214.02-[Reserved] 

 1214.03-Rehearing 

 1214.04-Examiner Reversed in Whole 

 1214.05-Cancellation of Claims Not Appealed 

 1214.06-Examiner Sustained in Whole or in Part; Claims Require Action 

 1214.07-Reopening of Prosecution 

 
 

 1215-Withdrawal or Dismissal of Appeal 
 1215.01-Withdrawal of Appeal 

 1215.02-Claims Standing Allowed 

 1215.03-Partial Withdrawal 

 1215.04-Dismissal of Appeal 

 
 

 1216-Judicial Review 
 1216.01-Appeals to the U.S. Court of Appeals for the Federal Circuit 

 1216.02-Civil Suits Under 35 U.S.C. 145 and 146 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:49:25