MPEP 2674.01
Cross Appeal After Original Appeal

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

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2674.01    Cross Appeal After Original Appeal [R-11.2013]

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

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  • (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.

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The cross appeal provision of 37 CFR 41.61(b) permits a party to the reexamination to wait and see if an opposing party will appeal, before committing to the appeal process.

Within fourteen days of service of a third party requester’s notice of appeal, a patent owner who has not filed a notice of appeal, may file a notice of cross appeal, the cross appeal being with respect to any final decision (i.e., decision in the RAN) adverse to the patentability of any claim of the patent. Pursuant to 37 CFR 41.61(e), the time for filing the patent owner’s notice of cross appeal may not be extended.

Within fourteen days of service of a patent owner’s notice of appeal, a third party requester who has not filed a notice of appeal may file a notice of cross appeal, the cross appeal being with respect to any final decision (i.e., decision in the RAN) favorable to the patentability of any claim of the patent. Pursuant to 37 CFR 41.61(e), the time for filing the requester’s notice of cross appeal may not be extended.

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

Where there are more than two parties to the proceeding, i.e., the patent owner and more than one inter partes third party requester in a merged proceeding, then a third party cross appeal must be filed within fourteen days of service of a patent owner’s notice of appeal. If a first third party requester filed an appeal later than the patent owner’s appeal, then the second third party requester’s time for cross appeal runs from the earlier-in-time patent owner appeal, not from the later-in-time first requester appeal.

In addition, 37 CFR 41.61(b) only provides for a cross appeal from a "notice of appeal," not from a "notice of cross appeal." Thus, if the patent owner files a notice of cross appeal after the original one month/thirty days period for appeal has expired, but within the fourteen days of a first requester’s appeal (which was filed within the original period); a second third party requester does not have fourteen days from the patent owner’s cross appeal. In such a situation, the time for the second requester to appeal (the original one month/thirty days) has expired and the second requester cannot appeal.

The content of a notice of cross appeal is the same as that for a notice of appeal, except that the notice of cross appeal is titled as such and identifies the original appeal from which the cross appeal is taken. Where a party inadvertently fails to title or identify a notice of cross appeal as such (i.e., the format for an original appeal is used), in an appeal filed after the original one month/thirty days has expired but before the "fourteen days" have expired, the examiner will construe the notice of appeal as the filing of a notice of cross appeal timely filed within the fourteen days.