1203    Administrative Handling [R-11.2013]

Ex parte appeals to the Board, and documents relating thereto filed prior to a docketing notice from the Board, are reviewed to determine the business unit of the Office responsible for their processing. Appeal documents, such as the notice of appeal, pre-appeal brief request for review (See MPEP § 1204.02), and request for extension of time to file the brief, are processed by the Patent Appeal Center.

Appeal Briefs are processed by the Board. See 75 FR 15689, "Streamlined Procedure for Appeal Brief Review," March 30, 2010  and 75 FR 29321, "Streamlined Procedure for Appeal Brief Review in Ex Parte Reexamination Proceedings," May 25, 2010.

The Board's responsibility for determining whether an appeal brief is compliant 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 appellant under 37 CFR 41.37(d)  of the reasons for non-compliance. The Patent Examining Corps retains jurisdiction over the application to consider the appeal brief, conduct an appeal conference, draft an examiner's answer, and decide the entry of amendments, evidence, and information disclosure statements filed after final or after notice of appeal.

Therefore, examiners should not identify notices of appeal, appeal briefs or reply briefs as defective or noncompliant for failure to comply with the rules. In the rare situation where a substantial defect in an appeal document is identified after these reviews, the examiner should contact the Patent Appeal Center to determine whether corrective action should be taken.

The Patent Appeal Center may return the application to the examiner for corrections to the examiner's answer or other outgoing documents when appropriate.

If the brief is not filed within the time designated by 37 CFR 41.37, the applicant will be notified that the appeal stands dismissed. See MPEP § 1215.

I.   DOCKETING PROCEDURE

The Board’s docketing procedure is designed to provide notification to the appellant within one month of receipt of an appealed application at the Board that (A) the appeal has been received at the Board and docketed, or (B) the appeal is being remanded to the examiner for attention to unresolved matters.

If the appeal is ready for docketing three events will occur:

  • (A) an appeal number will be assigned;
  • (B) the Board will issue a docketing notice; and
  • (C) the appeal will be assigned either to a master docket for subsequent reassignment to a panel or directly to a panel of at least three Board members.

If the appeal cannot be docketed due to matters requiring further attention in the patent examining corps, the appeal will be remanded to the patent examining corps with an order indicating why the appeal cannot be docketed. Notification of the remand, in the form of a copy of the order, will be mailed to the appellant.

The docketing notice or order indicating why the appeal cannot be docketed will provide the appellant and the examiner with notification that (A) the appeal is under the jurisdiction of the Board; or (B) that the appeal is being returned to the patent examining corps to resolve matters requiring attention prior to decision of the appeal. Thus, the appellant will know to which organization to look for the next communication in the appealed application.

II.   "SPECIAL CASE"

Subject alone to diligent prosecution by the applicant, an application for patent that once has been made special and advanced out of turn by the United States Patent and Trademark Office (Office) for examination will continue to be special throughout its entire course of prosecution in the Office, including appeal, if any, to the Board. See MPEP § 708.01.

A petition to make an application special after the appeal has been forwarded to the Board may be addressed to the Board. However, no such petition will be granted unless the brief has been filed and applicant has made the same type of showing required by the Director under 37 CFR 1.102. Therefore, diligent prosecution is essential to a favorable decision on a petition to make special.