MPEP § 1201 — MPEP § 1201
Current through: 2022-07-01

1201-Introduction 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1200 

 Section 1201 
 

 
 
 
 
 
 1201 Introduction [R-01.2024]

 The United States Patent and Trademark Office (Office) in administering
 the Patent Laws makes many decisions of a substantive nature which the applicant may feel
 deny them the patent protection to which they are entitled. The differences of opinion on
 such matters can be justly resolved only by prescribing and following judicial procedures.
 Where the differences of opinion concern the denial of patent claims because of prior art
 or other patentability issues, the questions thereby raised are said to relate to the
 merits, and appeal procedure within the Office and to the courts has long been provided by
 statute ( 35 U.S.C.
 134 ).
 

 Throughout this chapter, "Board" is used to refer the Patent
 Trial and Appeal Board and its predecessor organizations, the Board of Patent Appeals and
 Interferences and the separate Board of Appeals and Board of Interferences. 
 

 Unless otherwise noted, the discussion of the ex
 parte appeal practice before the Board in this chapter is primarily directed
 to appeals wherein the notice of appeal was filed on or after January 23, 2012, or to
 proceedings commenced on or after September 16, 2012. See Pub. L. 112-29 (September 16,
 2011)(known as the Leahy-Smith America Invents Act or the AIA) and final rule “Rules of
 Practice Before the Board of Patent Appeals and Interferences in Ex
 Parte Appeals, 76 Fed. Reg. 72270 (November 22, 2011).
 

 For information pertaining to the Board’s ex
 parte appeal practice and procedure in effect prior to September 16, 2012, see
 Chapter 1200 in the MPEP 8th Edition, Rev. 9 (August 2012)(available on the USPTO web site
 at www.uspto.gov/web/offices/ pac/mpep/old/mpep_E8R9.htm .
 

 The line of demarcation between appealable matters for the Board and
 petitionable matters for the Director of the U.S. Patent and Trademark Office (Director)
 should be carefully observed. The Board will not ordinarily hear a question that should be
 decided by the Director on petition, and the Director will not ordinarily entertain a
 petition where the question presented is a matter appealable to the Board. Ordinarily, an
 objection is petitionable, and a rejection is appealable, but when the objection is
 "determinative of the rejection" the matter may be addressed by the Board. See In
 re Hengehold, 440 F.2d 1395, 1403, 169 USPQ 473, 479 (CCPA 1971) and
 Ex parte Frye, 94 USPQ2d 1072, 1078 (Bd. Pat. App. & Int.
 2010)(precedential). Some matters which have been determined to be petitionable and not
 appealable include: a requirement for restriction or election of species, finality,
 non-entry of amendments, and holdings of abandonment. As 37 CFR 1.181(f) 
 states that any petition not filed within 2 months from the action complained of may be
 dismissed as untimely and since 37 CFR 1.144 states that petitions from
 restriction requirements must be filed no later than appeal, petitionable matters will
 rarely be present in a case by the time it is before the Board for a decision. In
 re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990).
 

 Applicants who meet certain financial thresholds and other
 criteria may be eligible for free legal assistance when appearing before the Patent Trial
 and Appeal Board (PTAB). The PTAB Pro Bono Program matches volunteer patent professionals
 with financially under-resourced applicants to provide free legal assistance in preparing
 ex parte appeals to the PTAB. Additional information can be found on the PTAB Pro Bono
 Program for independent inventors website at www.uspto.gov/PTABProBono . 
 

 This chapter is primarily directed to ex parte appeals.
 For appeals in inter partes reexamination proceedings, see
 37 CFR
 41.60 to 41.81 and MPEP §§ 2674 to
 2683 .
 

 [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