MPEP § 1210 — MPEP § 1210
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1200 

 Section 1210 
 

 
 
 
 
 
 1210 Actions Subsequent to Examiner’s Answer but Before Board’s
 Decision [R-10.2019]
 
 I. JURISDICTION OF BOARD 
 37 CFR 41.35 Jurisdiction over appeal. 

 
 (a) Beginning of jurisdiction. Jurisdiction over the proceeding
 passes to the Board upon the filing of a reply brief under § 41.41 or
 the expiration of the time in which to file such a reply brief, whichever is
 earlier.
 

 (b) End of jurisdiction. The jurisdiction of the Board ends
 when:
 
 (1) The Director or the Board enters a remand
 order ( see §§ 41.35(c) ,
 41.35(e) , and 41.50(a)(1) ),
 

 (2) The Board enters a final decision
 ( see § 41.2 ) and judicial
 review is sought or the time for seeking judicial review has expired,
 

 (3) An express abandonment which complies
 with § 1.138 of this title is recognized,
 

 (4) A request for continued examination is
 filed which complies with § 1.114 of this
 title,
 

 (5) Appellant fails to take any required
 action under §§ 41.39(b) ,
 41.50(a)(2) , 41.50(b) , or
 41.50(d) , and the Board enters an order of
 dismissal, or
 

 (6) Appellant reopens prosecution pursuant to
 § 41.40(b) or in
 response to a new ground of rejection entered in a decision of the Board
 ( see § 41.50(b)(1) ).
 

 
 

 (c) Remand ordered by the Director. Prior to the entry of a
 decision on the appeal by the Board ( see § 41.50 ),
 the Director may sua sponte order the proceeding remanded to the examiner.
 

 (d) Documents filed during Board's jurisdiction. Except for
 petitions authorized by this part, consideration of any information disclosure
 statement or petition filed while the Board possesses jurisdiction over the
 proceeding will be held in abeyance until the Board's jurisdiction ends.
 

 (e) Administrative remands ordered by the Board. If, after
 receipt and review of the proceeding, the Board determines that the file is not
 complete or is not in compliance with the requirements of this subpart, the
 Board may relinquish jurisdiction to the examiner or take other appropriate
 action to permit completion of the file.
 

 
 

 Jurisdiction over the application passes from the Technology Centers to
 the Board at the time specified in 37 CFR 41.35(a) .
 

 Any amendment or other paper relating to the appeal filed thereafter,
 but prior to the decision of the Board, may be considered by the examiner only in the
 event the case is remanded for that purpose.
 

 II. ABANDONMENT OF APPEAL: ABANDONMENT, CONTINUED EXAMINATION, OR REFILING OF CASE ON
 APPEAL To avoid the rendering of decisions by the Board in applications which
 appellants have decided to abandon, file a request for continued examination (RCE), or
 to refile as continuations, appellants should promptly inform the Clerk of the Board in
 writing as soon as they have positively decided to refile, file an RCE, or abandon an
 application containing an appeal awaiting a decision. Failure to exercise appropriate
 diligence in this matter may result in the Board refusing an otherwise proper request to
 vacate its decision.
 

 See MPEP
 §§ 1215.01 - 1215.03 concerning the withdrawal of
 appeals.
 

 [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 20:50:33