MPEP § 1212 — Board Requires Appellant to Address Matter (Annotated Rules)
§1212 Board Requires Appellant to Address Matter
This page consolidates and annotates all enforceable requirements under MPEP § 1212, 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.
Board Requires Appellant to Address Matter
This section addresses Board Requires Appellant to Address Matter. Primary authority: 37 CFR 41.50(d), 37 CFR 41.35(d), and 37 CFR 41.50. Contains: 3 permissions and 3 other statements.
Key Rules
Board Decision Types
37 CFR 41.50(d) authorizes the Board to require appellant to additionally brief any matter that the Board considers to be of assistance in reaching a reasoned decision on the pending appeal. This may include, for example: (A) the applicability of particular case law that has not been previously identified as relevant to an issue in the appeal; or (B) the applicability of prior art that has not been made of record. However, consideration of information disclosure statements filed while the Board possesses jurisdiction over the appeal will be held in abeyance until the Board's jurisdiction ends. See 37 CFR 41.35(d).
The making of a requirement under 37 CFR 41.50(d) is discretionary with the Board. The authority granted in 37 CFR 41.50(d) does not affect the Board’s authority to remand a case to the examiner in a situation where the Board considers action by the examiner in the first instance to be necessary or desirable. See MPEP § 1211. Also, after an appellant has replied to a requirement under 37 CFR 41.50(d), a remand by the Board to the examiner may be appropriate to permit the examiner to respond to the appellant’s response to the Board’s order.
Grounds for Dismissal of Appeal
The rule further provides that the appellant will be given a time period within which to respond to the requirement. Extensions of time are only available under 37 CFR 1.136(b). Failure to respond within the time period set by the Board may result in dismissal of the appeal.
The rule further provides that the appellant will be given a time period within which to respond to the requirement. Extensions of time are only available under 37 CFR 1.136(b). Failure to respond within the time period set by the Board may result in dismissal of the appeal.
Ex Parte Appeals to PTAB
The rule further provides that the appellant will be given a time period within which to respond to the requirement. Extensions of time are only available under 37 CFR 1.136(b). Failure to respond within the time period set by the Board may result in dismissal of the appeal.
Board Decision
The making of a requirement under 37 CFR 41.50(d) is discretionary with the Board. The authority granted in 37 CFR 41.50(d) does not affect the Board’s authority to remand a case to the examiner in a situation where the Board considers action by the examiner in the first instance to be necessary or desirable. See MPEP § 1211. Also, after an appellant has replied to a requirement under 37 CFR 41.50(d), a remand by the Board to the examiner may be appropriate to permit the examiner to respond to the appellant’s response to the Board’s order.
Citations
| Primary topic | Citation |
|---|---|
| Ex Parte Appeals to PTAB Grounds for Dismissal of Appeal | 37 CFR § 1.136(b) |
| Board Decision Types | 37 CFR § 41.35(d) |
| Board Decision Board Decision Types | 37 CFR § 41.50(d) |
| Board Decision Board Decision Types | MPEP § 1211 |
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 § 1212 — Board Requires Appellant to Address Matter
Source: USPTO1212 Board Requires Appellant to Address Matter [R-08.2017]
37 CFR 41.50 Decisions and other actions by the Board.
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- (d) Request for briefing and information. The Board may order appellant to additionally brief any matter that the Board considers to be of assistance in reaching a reasoned decision on the pending appeal. Appellant will be given a time period within which to respond to such an order. Failure to timely comply with the order may result in the sua sponte dismissal of the appeal.
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37 CFR 41.50(d) authorizes the Board to require appellant to additionally brief any matter that the Board considers to be of assistance in reaching a reasoned decision on the pending appeal. This may include, for example: (A) the applicability of particular case law that has not been previously identified as relevant to an issue in the appeal; or (B) the applicability of prior art that has not been made of record. However, consideration of information disclosure statements filed while the Board possesses jurisdiction over the appeal will be held in abeyance until the Board’s jurisdiction ends. See 37 CFR 41.35(d).
The rule further provides that the appellant will be given a time period within which to respond to the requirement. Extensions of time are only available under 37 CFR 1.136(b). Failure to respond within the time period set by the Board may result in dismissal of the appeal.
The making of a requirement under 37 CFR 41.50(d) is discretionary with the Board. The authority granted in 37 CFR 41.50(d) does not affect the Board’s authority to remand a case to the examiner in a situation where the Board considers action by the examiner in the first instance to be necessary or desirable. See MPEP § 1211. Also, after an appellant has replied to a requirement under 37 CFR 41.50(d), a remand by the Board to the examiner may be appropriate to permit the examiner to respond to the appellant’s response to the Board’s order.