MPEP § 1203 — MPEP § 1203
Current through: 2022-07-01

1203-Administrative Handling 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1200 

 Section 1203 
 

 
 
 
 
 
 1203 Administrative Handling [R-10.2019]

 Ex parte appeals to the Board, and documents relating thereto filed
 prior to a docketing notice from the Board, are reviewed to determine the business unit of
 the Office responsible for their processing. Appeal documents, such as the notice of
 appeal, appeal brief, pre-appeal brief request for review (See MPEP §
 1204.02 ), and request for extension of time to file the brief,
 are processed by the Patent Appeal Center.
 

 The Patent Examining Corps has jurisdiction over the
 application to consider the appeal brief, conduct an appeal conference, draft an examiner's
 answer, and decide the entry of amendments, evidence, and information disclosure statements
 filed after final or after notice of appeal. Jurisdiction over the proceeding passes to the
 Board upon the filing of a reply brief under 37 CFR 41.41 or the expiration of the
 time in which to file such a reply brief, whichever is earlier. See 37 CFR 41.35 . 
 

 The Patent Appeal Center will forward the application to
 the Board after the jurisdiction has transferred to the Board and, where waiver of the
 appeal forwarding fee doesn’t apply, the Patent Appeal Center has processed the appeal
 forwarding fee. Even if applicant has filed a reply brief, the appeal will not be forwarded
 to the Board prior to the payment of the appeal forwarding fee.
 

 Notices of appeal, appeal briefs, and reply briefs are
 reviewed for compliance with the appropriate rules prior to being forwarded to the
 examiner. As such, examiners should not identify these documents as defective or
 noncompliant for failure to comply with procedural rules. In the rare situation where a
 substantial defect in an appeal document is identified after these reviews, the examiner
 should contact the Patent Appeal Center to determine whether corrective action should be
 taken.
 

 The Patent Appeal Center may return the application to the examiner for
 corrections to the examiner's answer or other outgoing documents when appropriate.
 

 If the brief is not filed within the time designated by 37 CFR 41.37 , the
 applicant will be notified that the appeal stands dismissed. See MPEP § 1215 . 
 

 I. DOCKETING PROCEDURE The Board’s docketing procedure is designed to provide notification to
 the appellant within one month of receipt from the Patent Appeal Center of an appealed
 application at the Board that (A) the appeal has been received at the Board and
 docketed, or (B) the appeal is being remanded to the examiner for attention to
 unresolved matters.
 

 If the appeal is ready for docketing three events will occur:

 
 (A) an appeal number will be assigned; 

 (B) the Board will issue a docketing notice; and

 (C) the appeal will be assigned either to a master docket for
 subsequent reassignment to a panel or directly to a panel of at least three Board
 members.
 

 
 If the appeal cannot be docketed due to matters requiring further
 attention in the patent examining corps, the appeal will be remanded to the patent
 examining corps with an order indicating why the appeal cannot be docketed. Notification
 of the remand, in the form of a copy of the order, will be mailed to the appellant.
 

 The docketing notice or order indicating why the appeal cannot be
 docketed will provide the appellant and the examiner with notification that (A) the
 appeal is under the jurisdiction of the Board; or (B) that the appeal is being returned
 to the patent examining corps to resolve matters requiring attention prior to decision
 of the appeal. Thus, the appellant will know to which organization to look for the next
 communication in the appealed application.
 

 II. “SPECIAL CASE” If the applicant remains diligent, an application for patent that once
 has been made special and advanced out of turn by the United States Patent and Trademark
 Office (Office) for examination will continue to be special throughout its entire course
 of prosecution in the Office, including appeal, if any, to the Board. See
 MPEP §
 708.01 .
 

 A petition to make an application special after the jurisdiction of the
 appeal has been transferred to the Board may be addressed to the Board. Thus, no such
 petition will be granted unless the brief has been filed and applicant has made the same
 type of showing required by the Director under 37 CFR 1.102 . Therefore, diligent
 prosecution is essential to a favorable decision on a petition to make special.
 

 [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