MPEP § 2274 — MPEP § 2274
Current through: 2022-07-01

2274-Appeal Brief 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Patent Laws, Regulations, Policies & Procedures 

 
 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2274 
 

 
 
 
 
 
 2274 Appeal Brief [R-01.2024]
 I. AMENDMENT Where the appeal brief is not filed, but within the period allowed for
 filing the brief an amendment is presented which places the claims of the patent under
 reexamination in a patentable condition, the amendment may be entered. Amendments should
 not be included in the appeal brief.
 

 As to separate amendments, i.e., amendments not included with the
 appeal brief, filed with or after the appeal, see MPEP § 1206 .
 

 II. TIME FOR FILING APPEAL BRIEF The time for filing the appeal brief is two (2) months from the date of
 the appeal.
 

 III. EXTENSION OF TIME FOR FILING APPEAL BRIEF In the event that the patent owner finds themself unable to file a
 brief within the time allowed by the rules, they may file a request with the appropriate
 extension of time fee, to the Central Reexamination Unit (CRU) or Technology Center
 (TC), requesting additional time. See MPEP § 2265 for specific guidance. The
 request should contain the address to which the response is to be sent. If the request
 and the required fee are filed prior to the expiration of the period sought to be
 extended ( 37 CFR
 1.550(c) ), the CRU SPRS or TC Director is authorized to grant the
 extension for up to one month in third party requested reexamination proceedings, and
 for up to two months (i.e., a “no cause” extension) in patent owner requested
 reexamination proceedings (including reexaminations ordered under 35 U.S.C.
 257 ) or Director ordered reexamination proceedings. Requests for
 extensions of time for more than one month in third party requested reexaminations and
 for more than two months in patent owner requested reexaminations (including
 reexaminations ordered under 35 U.S.C. 257 ) or Director ordered
 reexaminations, will also be decided by the CRU SPRS or TC Director, but will not be
 granted unless extraordinary circumstances are involved; e.g., death or incapacitation
 of the patent owner. The time extended is added to the last calendar day of the original
 period, as opposed to being added to the day it would have been due when said last day
 is a Saturday, Sunday, or federal holiday.
 

 IV. FAILURE TO TIMELY FILE APPEAL BRIEF Failure to file the brief and/or the appeal brief fee within the
 permissible time will result in dismissal of the appeal. Form PTOL-468 may be used to
 notify the patent owner that the appeal is dismissed. The reexamination prosecution is
 then terminated, and a Notice of Intent to Issue Ex Parte 
 Reexamination Certificate (NIRC) (see MPEP § 2287 ) will subsequently be
 issued indicating the status of the claims at the time of appeal.
 

 V. REQUIREMENTS FOR THE APPEAL BRIEF A fee as set forth in 37 CFR 41.20(b)(2) is required when
 the appeal brief is filed for the first time in a particular reexamination proceeding,
 35 U.S.C.
 41(a) . 37 CFR 41.37 provides that the
 appellant shall file a brief of the authorities and arguments on which they will rely to
 maintain their appeal, including a summary of claimed subject matter which must refer to
 the specification by page and line number, and to the drawing, if any, by reference
 characters, and a copy of the claims involved. Only one copy of the appeal brief is
 required. Where the request for reexamination was filed by a third-party requester, a
 copy of the brief must be served on that third-party requester.
 

 In the case of a merged proceeding (see MPEP § 2283 and
 §
 2285 ), one original copy of the brief should be provided for
 each reexamination proceeding and reissue application in the merged proceeding. In
 addition, a copy of the brief must be served on any third-party requesters who are part
 of the merged proceeding.
 

 For the sake of convenience, the copy of the claims involved should be
 double spaced and should start on a new page. Note that the copy of the claims on appeal
 in reexamination proceedings must include all underlining and bracketing, as required by
 37 CFR
 1.530(f) , to reflect the changes made to the original patent
 claims throughout the prosecution of the reexamination. In addition, any new claims
 added in the reexamination should be completely underlined. This represents a departure
 from the procedure set forth in MPEP § 1205.02 for applications.
 

 The brief, as well as every other paper relating to an appeal, should
 indicate the number of the art unit to which the reexamination is assigned and the
 reexamination control number. When the brief is received, it is forwarded to the CRU or
 TC (depending which is examining the proceeding) where it is entered in the file and
 referred to the examiner.
 

 Patent owners are reminded that their briefs in appeal cases must be
 responsive to every ground of rejection stated by the examiner. A reply brief, if filed,
 shall be entered, except that amendments or affidavits or other evidence are subject to
 37 CFR
 1.116 and 41.33 . See 37 CFR
 41.41(a)(2) . 
 

 It is essential that the Board should be provided with a brief fully
 stating the position of the appellant with respect to each issue involved in the appeal
 so that no search of the record is required in order to determine that position. The
 fact that appellant may consider a ground to be clearly improper does not justify a
 failure on the part of the appellant to point out to the Board the reasons for that view
 in the brief.
 

 See MPEP
 § 1205.02 for further discussion of the requirements for an
 appeal brief.
 

 VI. SEEKING REVIEW OF A FINDING OF A SUBSTANTIAL NEW QUESTION OF PATENTABILITY The patent owner may seek review on the examiner's SNQ
 determination before the Board along with any appeal of the examiner's rejections. To
 obtain review of the SNQ issue, patent owner must include the SNQ issue and the
 appropriate arguments in its appeal brief to the Board. In order to preserve the right
 to have the Board review of the SNQ issue, a patent owner must have first requested
 reconsideration of the SNQ issue by the examiner. Accordingly, for ex
 parte reexamination proceedings ordered on or after June 25, 2010, the
 patent owner may seek a final agency decision from the Board on the SNQ issue only if
 the patent owner has first requested reconsideration before the examiner (e.g., in a
 patent owner's statement under 37 CFR 1.530 or in a patent owner's
 response under 37 CFR
 1.111 ) and then seeks review of the examiner's SNQ determination
 before the Board. In its appeal brief, the patent owner is to clearly present the issue
 and arguments regarding the examiner's SNQ determination under a separate heading and
 identify the communication in which the patent owner first requested reconsideration
 before the examiner. (For ex parte reexamination proceedings ordered
 prior to June 25, 2010, if the patent owner presents the SNQ issue in its appeal brief,
 the Board panel will review the procedural SNQ issue along with its review of any
 rejections in an appeal and will enter a final agency decision accordingly.) 
 

 The final decision by the Board panel in the ex
 parte reexamination proceeding may include: (1) its review of the
 procedural SNQ issue in a separate section, and (2) its review of the merits of the
 rejections. See, e.g., In re Searles, 422 F.2d 431, 434-35, 164 USPQ
 623, 626 (C.C.P.A. 1970) (holding certain procedural matters that are “determinative of
 the rejection” are properly appealable to the Board); see also In re
 Hengehold, 440 F.2d 1395, 1404, 169 USPQ 473, 480 (C.C.P.A. 1971) (“[T]he
 kind of adverse decisions of examiners which are reviewable by the board must be those
 which relate, at least indirectly, to matters involving the rejection of the claims.'');
 cf. 37 CFR
 41.121 (providing both "substantive" motions and "miscellaneous,"
 i.e., procedural motions, which may be decided together in a single decision).
 

 The patent owner may file a single request for rehearing
 under 37 CFR
 11.52 for both the decision on the SNQ issue and the merits
 decision on the examiner's rejections, resulting in a single final decision for purposes
 of judicial review. Judicial review of the Board's final decision issued pursuant to
 35 U.S.C.
 134 , which will incorporate the decision on the finding of a SNQ,
 is directly appealable to the United States Court of Appeals for the Federal Circuit
 under 35 U.S.C.
 141 . See In re Hiniker Co., 150 F.3d 1362,
 1367, 47 USPQ2d 1523, 1528 (Fed. Cir. 1998) (“With direct review by this court of the
 Board's reexamination decisions, a patentee can be certain that it cannot be subjected
 to harassing duplicative examination.”); see also Heinl v. Godici, 
 143 F. Supp. 2d 593, 597-598 (E.D. Va. 2001).
 

 VII. DEFECTIVE APPEAL BRIEF Since May 25, 2010, the Patent Trial and Appeal Board,
 (Board), has the sole responsibility for determining whether appeal briefs filed in
 ex parte reexamination proceedings comply with 37 CFR 41.37 , and
 will complete the determination before the appeal brief is forwarded to the examiner for
 consideration. If the appeal brief is determined to be compliant with the rules or it
 contains only minor informalities that do not affect the Board panel’s ability to render
 a decision, the Board will accept the appeal brief and forward it to the examiner for
 consideration. If the Board determines that the appeal brief is non-compliant with
 37 CFR
 41.37 and sends appellant a notice of non-compliant brief
 requiring a corrected brief, appellant will be required to file a corrected brief within
 the time period set forth in the notice to avoid the dismissal of the appeal. The Board
 also has the sole responsibility for determining whether corrected briefs comply with
 37 CFR
 41.37 , and addresses any inquiries and petitions regarding notices
 of non-compliant briefs.
 

 Once an appeal brief is accepted by the Board as in
 compliance with 37 CFR
 41.37 , the appeal brief will not later be held as defective by the
 CRU or the examiner. The Board will not return or remand the proceeding to the examiner
 for issues related to a non-compliant appeal brief. Furthermore, examiners are not
 required to review appeal briefs for the purposes of determining whether the appeal
 briefs comply with 37
 CFR 41.37 . Accordingly, the Notification of Non-Compliant Appeal
 Brief (PTOL-462R) and form paragraphs for holding an appeal brief defective are no
 longer be available for the CRU to use.
 

 Examiners are no longer to hold any appeal briefs
 defective. Rather, the Board will correspond directly with the appellant on
 non-compliant brief issues. In a rare situation where an appeal brief contains serious
 defects that will prevent the examiner from drafting an examiner’s answer, the examiner
 should report the issue to the Director of CRU who will communicate with the Board
 regarding the issue if appropriate.
 

 In addition, examiners are not required to make any
 determination whether fewer than all of the rejected claims are identified by the
 appellant as being appealed. If the notice of appeal or appeal brief identifies fewer
 than all of the rejected claims as being appealed, the issue will be addressed by the
 Board panel. Therefore, the examiner will treat all pending, rejected claims as being on
 appeal, and the examiner must maintain all of the rejections set forth in the Office
 action from which the appeal is taken, unless appellant has overcome the rejection
 (e.g., by submitting persuasive arguments, an acceptable terminal disclaimer, or
 evidence). In situations where the appellant makes a request to hold a rejection in
 abeyance or did not present any argument on a rejection in the appeal brief, the
 examiner should maintain the rejection in the examiner’s answer. 
 

 The responsibility of the Board for determining whether
 appeal briefs comply with 37 CFR 41.37 is not considered a
 transfer of jurisdiction when an appeal brief is filed, but rather is only a transfer of
 the specific responsibility of notifying appellants under 37 CFR 41.37(d) of
 the reasons for non-compliance. The CRU retains the jurisdiction over the reexamination
 proceeding to consider the appeal brief, conduct a conference, draft an examiner’s
 answer, and decide the entry of amendments, evidence, and information disclosure
 statements filed after final or after the filing of a notice of appeal. Furthermore,
 petitions concerning the refusal to enter amendments and/or evidence remain delegated as
 per MPEP §§
 1002.02(b) and 1002.02(c) . The jurisdiction of the
 ex parte reexamination proceeding is transferred to the Board when
 a docketing notice is entered after the time period for filing a reply brief expires or
 the examiner acknowledges the receipt and entry of the reply brief.
 

 It is to be noted that the mere filing of any paper whatsoever entitled
 as a brief cannot necessarily be considered as compliance with 37 CFR 41.37 . The
 rule requires that the brief must set forth the authorities and arguments relied on, and
 to the extent that it fails to do so with respect to any ground of rejection, that
 ground may be summarily sustained. A distinction must be made between the lack of any
 argument and the presentation of arguments that carry no conviction. In the former case
 summarily sustaining the rejection is in order, while in the latter case a decision on
 the merits is made, although it may well be merely an affirmance based on the grounds
 relied on by the examiner.
 

 Appellant must traverse every ground of rejection
 set forth in the final rejection that appellant is presenting for review in the appeal.
 Oral argument at the hearing will not remedy a deficiency of failure to traverse a
 ground of rejection in the brief. Ignoring or acquiescing in any rejection, even one
 based upon formal matters which could be cured by subsequent amendment, will invite
 summarily affirmance of the rejection.
 

 The reexamination prosecution is considered terminated as of the date
 of the dismissal of the appeal. After the appeal is dismissed, the examiner will proceed
 to issue a Notice of Intent to Issue Ex Parte Reexamination
 Certificate for the proceeding; see MPEP § 2287 . 
 

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 2201-Introduction 

 2202-Citation of Prior Art and Written Statements 

 2203-Persons Who May Cite Prior Art or Written Statements 

 2204-Time for Filing Prior Art or Section 301 Written Statements 

 2205-Content of Prior Art or Section 301 Written Statements 

 2206-Submission and Handling of Prior Art or Section 301 Written Statements 

 2207-Entry of Court Decision in Patent File 

 2208-Service of Prior Art or Section 301 Written Statements on Patent Owner 

 2209-Ex Parte Reexamination 

 2210-Request for Ex Parte Reexamination under 35 U.S.C. 302 

 2211-Time for Requesting Ex Parte Reexamination under 35 U.S.C. 302 

 2212-Persons Who May File a Request for Ex Parte Reexamination under 35 U.S.C. 302 
 2212.01-Inquiries from Persons Other Than the Patent Owner 

 
 

 2213-Representative of Requester 

 2214-Content of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 

 2215-Fee for Requesting Ex Parte Reexamination under 35 U.S.C. 302 

 2216-Substantial New Question of Patentability 

 2217-Statement Applying Prior Art in a Request Filed under 35 U.S.C. 302 

 2218-Copies of Prior Art 

 2219-Copy of Printed Patent 

 2220-Certificate of Service 

 2221-Amendments Included in Request Filed under 35 U.S.C. 302 by Patent Owner 

 2222-Address of Patent Owner 

 2223-Withdrawal of Attorney or Agent 

 2224-Correspondence 

 2225-Untimely Paper Filed Prior to Order under 35 U.S.C. 304 

 2226-Initial Processing of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 

 2227-Incomplete Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 

 2228-[Reserved] 

 2229-Notice of Request under 35 U.S.C. 302 for Ex Parte Reexamination in Official Gazette 

 2230-Constructive Notice to Patent Owner 

 2231-Processing of Request Corrections 

 2232-Public Access to Reexaminations Filed under 35 U.S.C. 302 
 2232.01-Determining if a Reexamination Request Was Filed under 35 U.S.C. 302 for a Patent 

 
 

 2233-Processing in Central Reexamination Unit and Technology Center 

 2234-Entry of Amendments 

 2235-Record Systems 

 2236-Assignment of Reexamination 

 2237-Transfer Procedure 

 2238-Time Reporting 

 2239-Reexamination Ordered at the Director’s Initiative 

 2240-Decision on Request Filed under 35 U.S.C. 302 

 2241-Time for Deciding Request Filed under 35 U.S.C. 302 

 2242-Criteria for Deciding Request Filed under 35 U.S.C. 302 

 2243-Claims Considered in Deciding Request Filed under 35 U.S.C. 302 

 2244-Prior Art on Which the Determination Is Based in Requests Filed under 35 U.S.C. 302 

 2245-Processing of Decision 

 2246-Decision Ordering Reexamination under 35 U.S.C. 304 

 2247-Decision under 35 U.S.C. 303 on Request for Reexamination filed Under 35 U.S.C. 302, Request Denied 
 2247.01-Examples of Decisions on Request for Reexamination 

 
 

 2248-Petition From Denial of Request Filed Under 35 U.S.C. 302 

 2249-Patent Owner’s Statement in Reexaminations Filed Under 35 U.S.C. 302 

 2250-Amendment by Patent Owner 
 2250.01-Correction of Patent Drawings 

 2250.02-Correction of Inventorship 

 2250.03-Fees for Adding Claims and for Filing a Petition 

 
 

 2251-Reply by Third Party Requester 

 2252-Consideration of Statement and Reply 

 2253-Consideration by Examiner 

 2254-Conduct of Ex Parte Reexamination Proceedings 

 2255-Who Reexamines 

 2256-Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination 

 2257-Listing of Prior Art 

 2258-Scope of Ex Parte Reexamination 
 2258.01-Use of Previously Cited/Considered Art in Rejections 

 2258.02-Claiming Foreign Priority and Domestic Benefit in Reexamination 

 
 

 2259-Res Judicata and Collateral Estoppel in Reexamination Proceedings 

 2260-Office Actions 
 2260.01-Dependent Claims 

 
 

 2261-Special Status for Action 

 2262-Form and Content of Office Action 

 2263-Time for Response 

 2264-Mailing of Office Action 

 2265-Extension of Time 

 2266-Responses 
 2266.01-Submission Not Fully Responsive to Non-Final Office Action 

 2266.02-Examiner Issues Notice of Defective Paper in Ex Parte Reexamination 

 2266.03-Service of Papers 

 
 

 2267-Handling of Inappropriate or Untimely Filed Papers 

 2268-Petition for Entry of Late Papers for Revival of Reexamination Proceeding 

 2269-Reconsideration 

 2270-Clerical Handling 

 2271-Final Action 
 2271.01-Panel Review 

 
 

 2272-After Final Practice 

 2273-Appeal in Ex Parte Reexamination 

 2274-Appeal Brief 

 2275-Examiner’s Answer 

 2276-Oral Hearing 

 2277-Board Decision 

 2278-Action Following Decision 

 2279-Appeal to Courts 

 2280-Information Material to Patentability in Reexamination Proceeding Filed under 35 U.S.C. 302 

 2281-Interviews in Ex Parte Reexamination Proceedings 

 2282-Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon 

 2283-Multiple Copending Ex Parte Reexamination Proceedings 

 2284-Copending Ex Parte Reexamination and Interference Proceedings 

 2285-Copending Ex Parte Reexamination and Reissue Proceedings 

 2286-Ex Parte Reexamination and Litigation Proceedings 
 2286.01-Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and Covered Business Method Patent Review 

 
 

 2287-Conclusion of Ex Parte Reexamination Proceeding 
 2287.01-Examiner Consideration of Submissions After a NIRC 

 
 

 2288-Issuance of Ex Parte Reexamination Certificate 

 2289-Reexamination Review 

 2290-Format of Ex Parte Reexamination Certificate 

 2291-Notice of Ex Parte Reexamination Certificate Issuance in Official Gazette 

 2292-Distribution of Certificate 

 2293-Intervening Rights 

 2294-Concluded Reexamination Proceedings 

 2295-Reexamination of a Reexamination 

 2296-USPTO Forms To Be Used In Ex Parte Reexamination 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:49:35