1201.03 Premature Appeal
An application is ripe for appeal when the examining attorney issues a final action, and an appeal may also be taken from a second refusal on the same ground(s) or a repeated requirement; an appeal from a first refusal or requirement is premature. See TBMP § 1201.01. All grounds and/or requirements must be repeated in order for the second refusal to be considered as final. [ Note 1.] If, in response to a final Office action, the applicant files a request for reconsideration that raises a new issue, and does not timely file a notice of appeal, the applicant may not then file an appeal until a final Office action issues with respect to the new issue. [ Note 2.]
The Board has no jurisdiction to entertain a premature appeal. Thus, if an appeal is filed prematurely, the Board, in a written order, will notify the applicant that the appeal was filed prematurely, refund the fee and forward the application to the examining attorney for further appropriate action. The examining attorney will normally treat the premature notice of appeal as an incomplete response under 37 C.F.R. § 2.65(a) and allow the applicant time to submit a complete response. If the applicant has also filed a request for reconsideration or an appeal brief, the request for reconsideration or brief may be treated as a response. [ Note 3.] In the event that the examining attorney ultimately issues a final action, or a second refusal on the same ground(s) or a repeated requirement, and the applicant wishes to appeal, the applicant should file a new notice of appeal and a new appeal fee.
NOTES:
1. In re Page, 51 USPQ2d 1660, 1662 n.2 (TTAB 1999).
2. In re Virshup, 42 USPQ2d 1403, 1404 (TTAB 1997) (after final refusal on Principal Register, applicant amended to Supplemental Register; applicant’s appeal of initial refusal on Supplemental Register held premature).
3. In re Virshup, 42 USPQ2d 1403, 1404 (TTAB 1997).