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1205.03 Non-Compliant Appeal Brief and Amended Brief [R-8] - 1200 Appeal
1205.03 Non-Compliant Appeal Brief and Amended Brief [R-8]
**>Effective March 30, 2010, the Board of Patent Appeals and Interferences (BPAI) will have the sole responsibility for determining whether appeal briefs filed in patent applications comply with 37 CFR 41.37, and will complete the determination before the appeal brief is forwarded to the examiner for consideration. The determination should be completed within approximately one month from the filing of the appeal brief. If the appeal brief is determined to be compliant with the rules or it contains only minor informalities that do not affect the BPAI panel's ability to render a decision, the BPAI will accept the appeal brief and forward it to the examiner for consideration. If the BPAI determines that the appeal brief is non-compliant with 37 CFR 41.37 and sends appellant a notice of non-compliant brief requiring a corrected brief, appellant 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 BPAI will also have the sole responsibility for determining whether corrected briefs comply with 37 CFR 41.37, and will address any inquiries and petitions regarding notices of non-compliant briefs.
If appellant disagrees with the holding of noncompliance, a petition under 37 CFR 41.3 may be filed. Filing a petition will not toll the time period for reply set in the notice. Appellant must timely reply to the notice or the Office communication that requires an amended brief.
Once an appeal brief is accepted by the BPAI as in compliance with 37 CFR 41.37, the appeal brief will not later be held as defective by the Patent Appeal Center or the examiner. The BPAI will not return or remand the application 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 41.37. Accordingly, the Notification of Non-Compliant Appeal Brief (PTOL-462) and form paragraphs for holding an appeal brief defective will no longer be available in OACS for the patent examining corps to use.
The revised procedure for appeal brief review will take effect on March 30, 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 examiner's dockets because they have already been reviewed and accepted by the Patent Appeal Center. Furthermore, the BPAI will correspond directly with the appellant on non-compliant brief issues. Examiners may use form paragraphs 12.150.01 - 12.156.01 to draft examiner's answers to respond to appeal briefs filed in any format. In those rare situation where an appeal brief contains serious defects that will prevent the examiner from drafting an examiner's answer, the examiner should report the issue to the Technology Center (TC) Director who will communicate with the BPAI regarding the issue.
The responsibility of the BPAI for determining whether appeal briefs comply with 37 CFR 41.37 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 appellants under 37 CFR 41.37(d) of the reasons for non-compliance. The patent examining corps retains the 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 the filing of a notice of appeal. Furthermore, petitions concerning the refusal to enter amendments and/or evidence remain delegated to MPEP §§ 1002.02(b) and (c). The jurisdiction of the application will be transferred to the BPAI when a docketing notice is entered after the time period for filing a reply brief expires or the examiner acknowledges the receipt and entry of the reply brief.<
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