Reinstatement of Appeal
Ninth Edition of the MPEP, Revision 10.2019, Last Revised in June 2020
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1204.01 Reinstatement of Appeal [R-10.2019]
When prosecution is reopened after the filing of a notice of appeal and prior to a written decision by the Patent Trial and Appeal Board, appellant must file a new notice of appeal in compliance with 37 CFR 41.31 and a complete new appeal brief in compliance with 37 CFR 41.37 in order to reinstate the appeal. Any previously paid appeal fees set forth in 37 CFR 41.20 for filing a notice of appeal, filing an appeal brief (if any), requesting an oral hearing and/or forwarding the appeal to the Board will not be required to be paid again except if a final Board decision has been made on the first appeal.
If the appeal fees have increased since they were previously paid, then appellant must pay the difference between the current fee(s) and the amount previously paid. Appellant must file a complete new appeal brief in compliance with the format and content requirements of 37 CFR 41.37(c) within two months from the date of filing the new notice of appeal. See MPEP § 1205. This time period is extendible as provided in MPEP § 1205.01.
For example, suppose the applicant files a notice of appeal and two months later applicant files an appeal brief. During the appeal conference, it is decided to reopen prosecution as provided in MPEP § 1207.04 rather than draft an examiner’s answer. If applicant proceeds to file a subsequent appeal by filing a new notice of appeal and appeal brief, applicant would only pay the difference in fees between the current fees and the amount previously paid. Similarly, if applicant files an RCE after the notice of appeal and a final Board decision is not issued, the applicant would only pay the difference in fees between the current fees and the amount previously paid.
If the appeal results in a written decision, the Office will again require the submission of the fees under 37 CFR 41.20 if a new appeal is later filed. For example, if the Board issues a decision under 37 CFR 41.50(a)(1) affirming a rejection and the appellant does not seek reconsideration or file an appeal, then the decision on the appeal is final, and any subsequent prosecution resulting in a new appeal would require the payment of all appeal fees.
Moreover, if applicant elects to reopen prosecution under 37 CFR 41.50(a)(2)(ii) or 41.50(b)(1) after a decision by the Board, then applicant would have to pay the appeal fees if a new appeal is filed.
If applicant elects to maintain the appeal under 37 CFR 41.50(a)(2)(ii) or request rehearing after a decision under 37 CFR 41.50(a) or (b), the applicant need not pay additional appeal fees. Responding to a requirement for briefing under 37 CFR 41.50(d) or responding to a remand under 37 CFR 41.50(e) would not require payment of additional appeal fees.