MPEP 2674
Appeal in Inter Partes Reexamination

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

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2674    Appeal in Inter Partes Reexamination [R-07.2015]

35 U.S.C. 315 Appeal.

  • (a) PATENT OWNER.— The patent owner involved in an inter partes reexamination proceeding under this chapter—
    • (1) may appeal under the provisions of section 134 and may appeal under the provisions of sections 141 through 144, with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent; and
    • (2) may be a party to any appeal taken by a third-party requester under subsection (b).
  • (b) THIRD-PARTY REQUESTER.— A third-party requester—
    • (1) may appeal under the provisions of section 134, and may appeal under the provisions of sections 141 through 144, with respect to any final decision favorable to the patentability of any original or proposed amended or new claim of the patent; and
    • (2) may, subject to subsection (c), be a party to any appeal taken by the patent owner under the provisions of section 134 or sections 141 through 144.
  • (c) CIVIL ACTION.— A third-party requester whose request for an inter partes reexamination results in an order under section 313 is estopped from asserting at a later time, in any civil action arising in whole or in part under section 1338 of title 28, the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings.

37 C.F.R. 1.959 Appeal in inter partes reexamination.

  • Appeals to the Patent Trial and Appeal Board under 35 U.S.C. 134(c) are conducted according to part 41 of this title.

37 C.F.R. 41.61 Notice of appeal and cross appeal to Board.

  • (a)
    • (1) Upon the issuance of a Right of Appeal Notice under § 1.953 of this title, the owner may appeal to the Board with respect to the final rejection of any claim of the patent by filing a notice of appeal within the time provided in the Right of Appeal Notice and paying the fee set forth in § 41.20(b)(1).
    • (2) Upon the issuance of a Right of Appeal Notice under § 1.953 of this title, the requester may appeal to the Board with respect to any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any original, proposed amended, or new claim of the patent by filing a notice of appeal within the time provided in the Right of Appeal Notice and paying the fee set forth in § 41.20(b)(1).
  • (b)
    • (1) Within fourteen days of service of a requester’s notice of appeal under paragraph (a)(2) of this section and upon payment of the fee set forth in § 41.20(b)(1), an owner who has not filed a notice of appeal may file a notice of cross appeal with respect to the final rejection of any claim of the patent.
    • (2) Within fourteen days of service of an owner’s notice of appeal under paragraph (a)(1) of this section and upon payment of the fee set forth in § 41.20(b)(1), a requester who has not filed a notice of appeal may file a notice of cross appeal with respect to any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any original, proposed amended, or new claim of the patent.
  • (c) The notice of appeal or cross appeal in the proceeding must identify the appealed claim(s) and must be signed by the owner, the requester, or a duly authorized attorney or agent.
  • (d) An appeal or cross appeal, when taken, must be taken from all the rejections of the claims in a Right of Appeal Notice which the patent owner proposes to contest or from all the determinations favorable to patentability, including any final determination not to make a proposed rejection, in a Right of Appeal Notice which a requester proposes to contest. Questions relating to matters not affecting the merits of the invention may be required to be settled before an appeal is decided.
  • (e) The time periods for filing a notice of appeal or cross appeal may not be extended.
  • (f) If a notice of appeal or cross appeal is timely filed but does not comply with any requirement of this section, appellant will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended notice of appeal or cross appeal. If the appellant does not then file an amended notice of appeal or cross appeal within the set time period, or files a notice which does not overcome all the reasons for non-compliance stated in the notification of the reasons for non-compliance, that appellant’s appeal or cross appeal will stand dismissed.

An appeal cannot be taken by parties to the reexamination until a Right of Appeal Notice (RAN) has been issued. Once a RAN has been issued, the patent owner and any third party requester will have, in accordance with 37 CFR 1.953, a time period of one month or thirty days (whichever is longer) to file a notice of appeal (with the fee set forth in 37 CFR 41.20(b)(1) ). Pursuant to 37 CFR 41.61(e), the time for filing a notice of appeal may not be extended.

In the event that no party to the reexamination files a timely notice of appeal, the prosecution of the reexamination proceeding will be terminated, with the examiner issuing a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC); see MPEP § 2687. However, if one of the parties does file a notice of appeal within the one month/thirty day period, an opposing party can enter into the appeal by filing a notice of cross appeal pursuant to 37 CFR 41.61(b) within fourteen (14) days from service of the first party’s notice of appeal, see MPEP § 2674.01. Pursuant to 37 CFR 41.61(e), the time for filing a notice of cross appeal may not be extended.

Note that a requester is not entitled to file an appeal or cross appeal for proposed rejections which were determined to not raise a substantial new question of patentability or a reasonable likelihood of prevailing. Such as decision is final and nonappealable. See 35 U.S.C. 312(c) and 37 CFR 1.927.

The procedure for taking appeal is referenced in 37 CFR 1.959 and set forth in 37 CFR 41.61.

  • (A) The notice of appeal must identify the appealed claim(s).
  • (B) The appeal must be taken from (1) the rejection(s) of the claims in the Right of Appeal Notice (RAN) which the patent owner proposes to contest, or (2) the finding(s) of patentability of claims in the RAN which the third party requester proposes to contest. Therefore:
  • A notice of appeal by the patent owner must identify each claim rejected by the examiner that the patent owner intends to contest;
  • A notice of appeal by a third party requester must identify each rejection that was previously proposed which the third party requester intends to contest. It is not sufficient to merely appeal from the allowance of a claim (i.e., the examiner’s finding of a claim patentable); the third party requester must identify each previously proposed rejection to be contested.
  • (C) The notice of appeal must be signed by the patent owner or the third party requester, or their duly authorized attorney or agent.

"Appellant" and "respondent" are defined in 37 CFR 41.60. Where the patent owner appeals from the rejection of the claims, a third party requester responding to the patent owner’s appeal is termed the respondent as to the rejected claims. Where a third party requester appeals from a favorable determination with respect to the claims, the patent owner responding to the third party requester’s appeal is termed the respondent as to the favorable determination.

Where a party fails to file a timely notice of appeal or notice of cross appeal, that party may no longer file an appellant brief to appeal a claim determination adverse to that party.

A party is permitted to file a respondent brief in accordance with 37 CFR 41.66(b) and 41.68 (with the fee as required by 37 CFR 41.68(a) ), to respond to issues raised by an opposing party’s appellant brief. The respondent’s brief may include any arguments previously made of record that support the examiner’s finding with respect to any claim addressed in the opposing party’s appellant brief. See MPEP § 2675.01.

Where a notice of appeal or notice of cross appeal is timely filed but is defective, e.g., missing fee or missing portion of the fee, no proof of service is included, it is signed by an inappropriate party or is unsigned, failure to identify the appealed claims; 37 CFR 41.61(f) provides the appropriate party one opportunity to file, within a nonextendable period of one month, an amended notice of appeal or cross appeal that corrects the defect(s). Form PTOL-2067 should be used to provide the notification.

Where a notice of appeal or notice of cross appeal is filed before a RAN has been issued, the appropriate party will be notified in writing that the appeal is not acceptable. The paper will be placed in the file but it will not be considered at all in the proceeding, other than to inform the party that the appeal is not acceptable.

It should be noted that under 37 CFR 41.63(a), amendments filed after the date of filing an appeal (under 37 CFR 41.61 ) canceling claims may be admitted, where such cancellation does not affect the scope of any other pending claim in the proceeding. However, as to all other amendments filed after the date of filing an appeal, 37 CFR 41.63(b) states that such amendments will not be admitted except as permitted where the patent owner takes action for reopening prosecution under 37 CFR 41.77(b)(1). Also, under 37 CFR 41.63(c), affidavits, declarations, or exhibits submitted after the date of filing an appeal will not be admitted except as permitted by reopening prosecution under 37 CFR 41.77(b)(1).

Effective August 17, 2010, the Board was delegated the sole responsibility for determining whether appeal briefs (i.e., appellant’s brief, respondent’s brief, and rebuttal briefs) filed in inter partes reexamination proceedings comply with 37 CFR 1.943(c) and 37 CFR 41.67, 41.68, or 41.71. The Board completes the determination before the appeal briefs are forwarded to the examiner for consideration. If the appeal brief is determined to be compliant with the rules or it contains only minor informalities that do not affect the Board panel’s ability to render a decision, the Board will accept the appeal brief and forward it to the examiner for consideration. If the Board determines that the appeal brief is non-compliant with the rules and sends the party a notice of non-compliant brief requiring a corrected brief, the party will be required to file a corrected brief within the time period set forth in the notice to avoid the dismissal of the appeal. The Board will also have the sole responsibility for determining whether corrected briefs comply with 37 CFR 1.943(c) and 41.67,41.68, or 41.71, and will address any inquiries and petitions regarding page limits for briefs, entry of briefs or notices of non-compliant briefs.

Once an appeal brief is accepted by the Board, the appeal brief will not later be held as defective by the CRU or the examiner. The Board will not return or remand the proceeding to the examiner for issues related to a non-compliant appeal brief. Furthermore, examiners are not required to review appeal briefs for the purposes of determining whether the appeal briefs comply with 37 CFR 1.943(c) and 41.67, 41.68, or 41.71. Accordingly, the Inter Partes Reexamination Notification re Brief (PTOL-2073) and form paragraphs for holding an appeal brief defective are no longer available in OACS for the Examining Corps to use.

The revised procedure for appeal brief review took effect on August 17, 2010, regardless of the date on which the appeal brief is filed or forwarded to the examiner for consideration. Examiners should no longer hold any appeal briefs defective including those appeal briefs that are already on the examiners' dockets, because they have already been reviewed and accepted. Furthermore, the Board will correspond directly with the parties on non-compliant brief issues.

The responsibility of the Board for determining whether appeal briefs comply with the appropriate rules is not considered a transfer of jurisdiction when an appeal brief is filed, but rather is only a transfer of the specific responsibility of notifying parties of the reasons for non-compliance. The CRU retains the jurisdiction over the reexamination proceeding to consider the appeal briefs, conduct an appeal conference, draft an examiner’s answer, and decide the entry of amendments, evidence, and information disclosure statements filed after the Right of Appeal Notice (RAN) or after the filing of a notice of appeal. Furthermore, petitions concerning the refusal to enter amendments and/or evidence remain delegated according to MPEP §§ 1002.02(b) and (c). The jurisdiction of the inter partes reexamination proceeding is transferred to the Board when a docketing notice is entered after the time period for filing the last rebuttal brief (if appropriate) expires or the examiner acknowledges the receipt and entry of the last rebuttal brief.