MPEP § 1204.03 — Interviews After Notice of Appeal (Annotated Rules)
§1204.03 Interviews After Notice of Appeal
This page consolidates and annotates all enforceable requirements under MPEP § 1204.03, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Interviews After Notice of Appeal
This section addresses Interviews After Notice of Appeal. Primary authority: 37 CFR 41.20(b)(4), 37 CFR 41.35(a), and 37 CFR 41.35(c). Contains: 1 guidance statement, 1 permission, and 5 other statements.
Key Rules
PTAB Jurisdiction
After the time specified in 37 CFR 41.35(a), the application or ex parte reexamination is no longer under the jurisdiction of the examiner. While the examiner has no jurisdiction over a proceeding after the time set in 37 CFR 41.35(a), the Director of the USPTO or appropriate delegate has the authority to remand the proceeding to the examiner under 37 CFR 41.35(c). Requests for interviews on cases under the jurisdiction of the Board should be granted only with specific approval of the Technology Center Director upon a showing in writing of extraordinary circumstances that justify a remand from the Board to the examiner in order to conduct an interview.
After the time specified in 37 CFR 41.35(a), the application or ex parte reexamination is no longer under the jurisdiction of the examiner. While the examiner has no jurisdiction over a proceeding after the time set in 37 CFR 41.35(a), the Director of the USPTO or appropriate delegate has the authority to remand the proceeding to the examiner under 37 CFR 41.35(c). Requests for interviews on cases under the jurisdiction of the Board should be granted only with specific approval of the Technology Center Director upon a showing in writing of extraordinary circumstances that justify a remand from the Board to the examiner in order to conduct an interview.
Appeals in Reexamination
After the time specified in 37 CFR 41.35(a), the application or ex parte reexamination is no longer under the jurisdiction of the examiner. While the examiner has no jurisdiction over a proceeding after the time set in 37 CFR 41.35(a), the Director of the USPTO or appropriate delegate has the authority to remand the proceeding to the examiner under 37 CFR 41.35(c). Requests for interviews on cases under the jurisdiction of the Board should be granted only with specific approval of the Technology Center Director upon a showing in writing of extraordinary circumstances that justify a remand from the Board to the examiner in order to conduct an interview.
Except in unusual situations, no interview is permitted after the appeal brief is filed. See MPEP § 713.05. Where an appeal brief is filed in an application or ex parte reexamination, the phrase "after the appeal brief is filed" includes the time from filing of the appeal brief through the first of a decision by the Board, the mailing by the examiner of a rejection or other paper with a response period, the mailing of a notice of defective appeal brief, or the mailing of a notice of allowance.
Notice of Appeal Filing
As indicated in MPEP § 713.09, one interview after final rejection is normally permitted. Where a notice of appeal is filed in an application or ex parte reexamination, the phrase "after final rejection" includes only the time from the mailing of the final rejection through the filing of an appeal brief. However, as indicated in the notice "Pre-Appeal Brief Conference Pilot Program," 1296 OG 76 (July 12, 2005), no interviews will be granted from the filing of a request for pre-appeal review through issuance of a decision on the request. See MPEP § 1204.02.
As indicated in MPEP § 713.09, one interview after final rejection is normally permitted. Where a notice of appeal is filed in an application or ex parte reexamination, the phrase "after final rejection" includes only the time from the mailing of the final rejection through the filing of an appeal brief. However, as indicated in the notice "Pre-Appeal Brief Conference Pilot Program," 1296 OG 76 (July 12, 2005), no interviews will be granted from the filing of a request for pre-appeal review through issuance of a decision on the request. See MPEP § 1204.02.
Maintenance Fee Amounts
Effective March 19, 2013, 37 CFR 41.20(b)(4) sets a fee to forward an appeal to the Board after the mailing of an examiner’s answer. While appellants may desire an interview after mailing of an examiner’s answer and prior to payment of this fee, interviews during this time period are likely to confuse the record on appeal and are not permitted except in unusual situations. These unusual circumstances may include situations where appellant wishes to cancel all appealed claims and proceed to issue with claims previously indicated as allowable, or where the examiner is convinced that some but not all of the previously rejected claims are in condition for allowance.
Official Record on Appeal
Effective March 19, 2013, 37 CFR 41.20(b)(4) sets a fee to forward an appeal to the Board after the mailing of an examiner’s answer. While appellants may desire an interview after mailing of an examiner’s answer and prior to payment of this fee, interviews during this time period are likely to confuse the record on appeal and are not permitted except in unusual situations. These unusual circumstances may include situations where appellant wishes to cancel all appealed claims and proceed to issue with claims previously indicated as allowable, or where the examiner is convinced that some but not all of the previously rejected claims are in condition for allowance.
Ex Parte Appeals to PTAB
Effective March 19, 2013, 37 CFR 41.20(b)(4) sets a fee to forward an appeal to the Board after the mailing of an examiner’s answer. While appellants may desire an interview after mailing of an examiner’s answer and prior to payment of this fee, interviews during this time period are likely to confuse the record on appeal and are not permitted except in unusual situations. These unusual circumstances may include situations where appellant wishes to cancel all appealed claims and proceed to issue with claims previously indicated as allowable, or where the examiner is convinced that some but not all of the previously rejected claims are in condition for allowance.
Authorization for Examiner's Amendment
Citations
| Primary topic | Citation |
|---|---|
| Ex Parte Appeals to PTAB Maintenance Fee Amounts Official Record on Appeal | 37 CFR § 41.20(b)(4) |
| Appeals in Reexamination PTAB Jurisdiction | 37 CFR § 41.35(a) |
| Appeals in Reexamination PTAB Jurisdiction | 37 CFR § 41.35(c) |
| Notice of Appeal Filing | MPEP § 1204.02 |
| Appeals in Reexamination Authorization for Examiner's Amendment | MPEP § 713.05 |
| Notice of Appeal Filing | MPEP § 713.09 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 1204.03 — Interviews After Notice of Appeal
Source: USPTO1204.03 Interviews After Notice of Appeal [R-11.2013]
As indicated in MPEP § 713.09, one interview after final rejection is normally permitted. Where a notice of appeal is filed in an application or ex parte reexamination, the phrase “after final rejection” includes only the time from the mailing of the final rejection through the filing of an appeal brief. However, as indicated in the notice “Pre-Appeal Brief Conference Pilot Program,” 1296 OG 76 (July 12, 2005), no interviews will be granted from the filing of a request for pre-appeal review through issuance of a decision on the request. See MPEP § 1204.02.
Except in unusual situations, no interview is permitted after the appeal brief is filed. See MPEP § 713.05. Where an appeal brief is filed in an application or ex parte reexamination, the phrase “after the appeal brief is filed” includes the time from filing of the appeal brief through the first of a decision by the Board, the mailing by the examiner of a rejection or other paper with a response period, the mailing of a notice of defective appeal brief, or the mailing of a notice of allowance.
Effective March 19, 2013, 37 CFR 41.20(b)(4) sets a fee to forward an appeal to the Board after the mailing of an examiner’s answer. While appellants may desire an interview after mailing of an examiner’s answer and prior to payment of this fee, interviews during this time period are likely to confuse the record on appeal and are not permitted except in unusual situations. These unusual circumstances may include situations where appellant wishes to cancel all appealed claims and proceed to issue with claims previously indicated as allowable, or where the examiner is convinced that some but not all of the previously rejected claims are in condition for allowance.
After the time specified in 37 CFR 41.35(a), the application or ex parte reexamination is no longer under the jurisdiction of the examiner. While the examiner has no jurisdiction over a proceeding after the time set in 37 CFR 41.35(a), the Director of the USPTO or appropriate delegate has the authority to remand the proceeding to the examiner under 37 CFR 41.35(c). Requests for interviews on cases under the jurisdiction of the Board should be granted only with specific approval of the Technology Center Director upon a showing in writing of extraordinary circumstances that justify a remand from the Board to the examiner in order to conduct an interview.