MPEP Section 1212, Board Requires Appellant to Address Matter
Executive summary:
This document contains Section 1212 ("Board Requires Appellant to Address Matter") of the Manual of Patent Examining Procedure (the "M.P.E.P."), Eighth Edition, Eighth Revision (July 2010). This page was last updated in January 2011. You may return to the section index to find a particular section. Alternatively, you may search the MPEP using the search box that appears on the left side of every page of BitLaw--you may restrict your search to the MPEP on the search results page.
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1212 Board Requires Appellant to Address Matter [R-3]
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37 CFR 41.50 Decisions and other actions by the Board.
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(d) The Board may order appellant to additionally brief any matter that the Board considers to be of assistance in reaching a reasoned decision on the pending appeal. Appellant will be given a non-extendable time period within which to respond to such an order. Failure to timely comply with the order may result in the sua sponte dismissal of the appeal.<
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37 CFR *>41.50(d)< authorizes the Board to **>additionally brief< any matter deemed appropriate for a reasoned decision on the appeal. This may include, for example: (A) the applicability of particular case law that has not been previously identified as relevant to an issue in the appeal; or (B) the applicability of prior art that has not been made of record.
The rule further provides that the appellant will be given a non-extendable time period within which to respond to the requirement. Failure to respond within the time period set by the Board *>may< result in dismissal of the appeal.
The making of a requirement under 37 CFR *>41.50(d)< is discretionary with the Board. The authority granted in 37 CFR *>41.50(d)< does not affect the Board's authority to remand a case to the examiner in a situation where the Board considers action by the examiner in the first instance to be necessary or desirable. See MPEP § 1211. Also, after an appellant has replied to a requirement under 37 CFR *>41.50(d)<, a remand >by the Board< to the examiner may be ** appropriate >to permit the examiner to respond to the appellant's response to the Board's order<.