What are the consequences of reopening prosecution after appeal in a patent application?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Reopening prosecution after appeal in a patent application can have several consequences:

• Withdrawal of the appeal: The appeal is automatically withdrawn when prosecution is reopened.
• New Office action: The examiner must issue a new Office action addressing all claims on appeal.
• Additional prosecution: The applicant may need to respond to new rejections or arguments, potentially extending the examination process.
• Possible petition opportunity: If the applicant disagrees with the reopening, they may have grounds to file a petition under 37 CFR 1.181.

As stated in MPEP 1207.04: “The examiner should never reopen prosecution in an application after appellant has filed a brief and the examiner’s answer has been mailed, unless an amendment under 37 CFR 41.33 necessitates such reopening.”