MPEP § 1208 — MPEP § 1208
Current through: 2022-07-01

1208-Reply Briefs and Fee for Forwarding Appeal 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1200 

 Section 1208 
 

 
 
 
 
 
 1208 Reply Briefs and Fee for Forwarding Appeal [R-11.2013]

 
 37 CFR 41.40 Tolling of time period to file a reply brief. 

 
 (a) Timing. Any request to seek review of the primary examiner’s
 failure to designate a rejection as a new ground of rejection in an examiner’s
 answer must be by way of a petition to the Director under § 1.181 of
 this title filed within two months from the entry of the examiner’s answer and
 before the filing of any reply brief. Failure of appellant to timely file such a
 petition will constitute a waiver of any arguments that a rejection must be
 designated as a new ground of rejection. 
 

 (b) Petition granted and prosecution reopened. A decision granting
 a petition under § 1.181 to designate a new
 ground of rejection in an examiner’s answer will provide a two-month time period
 in which appellant must file a reply under § 1.111 of this title to reopen
 the prosecution before the primary examiner. On failure to timely file a reply
 under § 1.111 , the appeal will stand dismissed. 
 

 (c) Petition not granted and appeal maintained. A decision refusing
 to grant a petition under § 1.181 of this title to
 designate a new ground of rejection in an examiner’s answer will provide a
 two-month time period in which appellant may file only a single reply brief under
 § 41.41. 
 

 (d) Withdrawal of petition and appeal maintained. If a reply brief
 under § 41.41 is filed within two months from the date of the examiner’s answer
 and on or after the filing of a petition under § 1.181 to
 designate a new ground of rejection in an examiner’s answer, but before a decision
 on the petition, the reply brief will be treated as a request to withdraw the
 petition and to maintain the appeal. 
 

 (e) Extensions of time. Extensions of time under §
 1.136(a) of this title for patent applications are not
 applicable to the time period set forth in this section. See § 1.136(b) of
 this title for extensions of time to reply for patent applications and §
 1.550(c) of this title for extensions of time to reply for
 ex parte reexamination proceedings. 
 

 
 

 
 37 CFR 41.41 Reply brief. 

 
 (a) Timing. Appellant may file only a single reply brief to an
 examiner's answer within the later of two months from the date of either the
 examiner's answer, or a decision refusing to grant a petition under §
 1.181 of this title to designate a new ground of rejection
 in an examiner's answer.
 

 (b) Content. 
 (1) A reply brief shall not include any new or
 non-admitted amendment, or any new or non-admitted affidavit or other
 Evidence. See § 37 CFR 1.116 of this
 title for amendments, affidavits or other evidence filed after final action
 but before or on the same date of filing an appeal and § 41.33 
 for amendments, affidavits or other Evidence filed after the date of filing
 the appeal.
 

 (2) Any argument raised in the reply brief which
 was not raised in the appeal brief, or is not responsive to an argument
 raised in the examiner's answer, including any designated new ground of
 rejection, will not be considered by the Board for purposes of the present
 appeal, unless good cause is shown.
 

 
 

 (c) Extensions of time. Extensions of time under §
 1.136(a) of this title for patent applications are not
 applicable to the time period set forth in this section. See § 1.136(b) of
 this title for extensions of time to reply for patent applications and §
 1.550(c) of this title for extensions of time to reply for
 ex parte reexamination proceedings.
 

 
 
 I. REPLY BRIEF Under 37 CFR 41.41(a)(1) , appellant may file a single reply brief as a
 matter of right within the later of two months from the date of either the examiner’s
 answer, or a decision refusing to grant a petition under 37 CFR 1.181 to
 designate a new ground of rejection in an examiner’s answer. Extensions of time to file
 the reply brief may be granted pursuant to 37 CFR 1.136(b) (for patent
 applications) or 1.550(c) (for ex parte reexamination
 proceedings). Extensions of time under 37 CFR 1.136(a) are not permitted.
 Normally, appellant is not required to file a reply brief to respond to an examiner’s
 answer, and if appellant does not file a reply brief within the two month period of
 time, the application will be forwarded to the Board for decision on the appeal. In
 response to the following, however, appellant is required to file either a reply brief
 to maintain the appeal or a reply under 37 CFR 1.111 to reopen prosecution: 
 

 
 (A) An examiner’s answer that designates a new ground of rejection
 pursuant to 37
 CFR 41.39 (see MPEP § 1207.03 ); or
 

 (B) A substitute examiner’s answer responding to a remand by the
 Board for further consideration of a rejection pursuant to 37 CFR
 41.50(a) (see MPEP § 1207.05 ). Such a
 substitute examiner’s answer may contain a new ground of rejection (also see
 MPEP §
 1207.03 ). 
 

 
 If appellant requests that the appeal be maintained in response to a
 new ground of rejection made in an examiner’s answer or a substitute examiner’s answer,
 the appellant must file a reply brief to address each new ground of rejection set forth
 in the answer in compliance with 37 CFR 41.37(c)(1)(iv) within two
 months from the mailing of the answer. The reply brief should include the following
 items, with each item starting on a separate page, so as to follow the other
 requirements of a brief as set forth in 37 CFR 41.37(c) : 
 

 
 (A) Identification page setting forth the appellant’s name(s), the
 application number, the filing date of the application, the title of the
 invention, the name of the examiner, the art unit of the examiner and the title of
 the paper (i.e., Reply Brief);
 

 (B) Argument page(s).

 
 New or non-admitted affidavits, and/or other evidence are not permitted
 in a reply brief. Any new amendment must be submitted in papers separate from the reply
 brief, and the entry of such papers is subject to the provisions of 37 CFR 41.33 . A
 paper that contains an amendment is not a reply brief within the meaning of
 37 CFR
 41.41 . Such a paper will not be entitled to
 entry simply because it is characterized as a reply brief. 
 

 If a reply brief is filed in response to a substitute examiner’s answer
 under 37 CFR
 41.50(a) that was written in response to a remand by the Board for
 further consideration of a rejection, any reply brief accompanied by an amendment,
 affidavit or other evidence will be treated as a request that prosecution be reopened
 before the examiner. If appellant fails to file a reply brief or a reply under
 37 CFR 1.111
 within two months from the mailing of the examiner’s answer that
 contains a new ground of rejection, or a substitute examiner’s answer under
 37 CFR
 41.50(a) , the appeal may be dismissed. See MPEP § 1207.03 and §
 1207.05 .
 

 II. EXAMINER’S RESPONSE TO A REPLY BRIEF After receipt of a reply brief under 37 CFR 41.41,
 jurisdiction over the appeal passes to the Board. Normally, the examiner does not need
 to acknowledge the reply brief and will not have an opportunity for further argument
 prior to a decision by the Board. However, the Board may remand the appeal to the
 examiner to furnish a substitute examiner’s answer responsive to the remand.
 

 
 1208.01 Fee for Forwarding an Appeal to the
 Board [R-07.2022]
 

 
 37 CFR 41.45 Appeal forwarding fee 

 
 (a) Timing. Appellant in an application or ex
 parte reexamination proceeding must pay the fee set forth in §
 37 CFR 41.20(b)(4) within the later of two months from
 the date of either the examiner's answer, or a decision refusing to grant a
 petition under § 1.181 of this chapter to
 designate a new ground of rejection in an examiner's answer.
 

 (b) Failure to pay appeal forwarding fee. On failure to pay the
 fee set forth in § 37 CFR 41.20(b)(4) within
 the period specified in paragraph (a) of this section, the appeal will stand
 dismissed.
 

 (c) Extensions of time. Extensions of time under §
 1.136(a) of this title for patent applications are not
 applicable to the time period set forth in this section. See 
 § 1.136(b) of this title for extensions of time to reply
 for patent applications and § 1.550(c) of this title for
 extensions of time to reply for ex parte reexamination
 proceedings.
 

 
 

 The examiner's answer should provide notice that the
 appeal forwarding fee must be paid within the requisite time period or the appeal will
 stand dismissed. See form paragraphs 12.279 and 12.279.01 . It is preferable that
 appellants pay this fee at the same time any reply brief is filed.
 

 Effective March 19, 2013, the fee for filing an appeal
 brief in an application or ex parte reexamination was reduced to $0
 and a new fee was added for forwarding the appeal to the Board after the mailing of an
 examiner's answer. Failure to pay this appeal forwarding fee results in the dismissal of
 the appeal. In the event that appellant fails to timely pay the fee, the appeal is
 dismissed by rule and the examiner should proceed as indicated in MPEP § 1215 
 regardless of whether a separate paper is mailed dismissing the appeal. The requirement
 to pay the appeal forwarding fee is waived when the appeal brief fee was paid before
 March 19, 2013. As long as the waiver is in effect, applicants having paid the appeal
 brief fee before March 19, 2013 will not be required to pay the appeal forwarding fee.
 This waiver only applied in an appeal in which the appeal brief and its corresponding
 appeal brief fee were filed before March 19, 2013 and where applicant seeks to reinstate
 an appeal in such application prior to the Board issuing a decision on the appeal filed
 prior to March 19, 2013. 
 

 The appeal forwarding fee is premature if the fee is
 filed prior to the mailing of the examiner’s answer. In addition, the Office cannot
 accept a general authorization to pay the appeal forwarding fee because appeal fees are
 found in 37 CFR
 41.20 and not 37 CFR 1.16 to 1.18 . See
 37 CFR
 1.25(b) . Applicant should be clear in its authorization that the
 fee is directed to payment of the appeal forwarding fee. It is suggested that the
 applicant consider filing form PTO/AIA/34 (Certification and Transmittal of Appeal
 Forwarding Fee). An applicant who files a reply brief and authorizes the Office to
 charge any fees related to the submission of this paper will not have authorized the
 Office to charge the appeal forwarding fee because the submission of the reply brief and
 submission of the appeal forward fee are not required to be submitted at the same
 time.
 

 As an example, suppose the applicant filed an appeal
 brief, including payment of the appeal brief fee, on March 18, 2013 and a final Board
 decision issued in the appeal on March 16, 2015. Following the Board decision the
 applicant timely files a request for continued examination under 37 CFR 1.114 on
 May 17, 2015. After prosecution of the RCE before the examiner, the applicant files a
 new notice of appeal and an appeal brief. The applicant would be required to pay the
 appeal forwarding fee within the period specified in 37 CFR
 41.45(a) to continue with the appeal.
 

 The appeal forwarding fee does not apply to inter
 partes reexamination appeals. 
 

 

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 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