MPEP § 1207.01 — Appeal Conference (Annotated Rules)
§1207.01 Appeal Conference
This page consolidates and annotates all enforceable requirements under MPEP § 1207.01, 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.
Appeal Conference
This section addresses Appeal Conference. Primary authority: 37 CFR 41.39. Contains: 4 requirements, 4 guidance statements, 1 permission, and 2 other statements.
Key Rules
Ex Parte Appeals to PTAB
The participants of the appeal conference should include (1) the examiner charged with preparation of the examiner’s answer, (2) a supervisory patent examiner (SPE), and (3) another examiner, known as a conferee, having sufficient experience to be of assistance in the consideration of the merits of the issues on appeal. During the appeal conference, consideration should be given to the possibility of dropping cumulative art rejections and eliminating technical rejections of doubtful value.
The participants of the appeal conference should include (1) the examiner charged with preparation of the examiner’s answer, (2) a supervisory patent examiner (SPE), and (3) another examiner, known as a conferee, having sufficient experience to be of assistance in the consideration of the merits of the issues on appeal. During the appeal conference, consideration should be given to the possibility of dropping cumulative art rejections and eliminating technical rejections of doubtful value.
The examiner responsible for preparing the examiner’s answer should weigh the arguments of the other examiners presented during the appeal conference. If it is determined that the rejection(s) should be maintained, the examiner responsible for preparing the examiner’s answer will prepare the examiner’s answer.
The Patent Appeal Center will review the examiner’s answer to determine whether there is an indication that an appeal conference has been held. If the examiner’s answer does not contain the appropriate indication that an appeal conference has been held (i.e., including the names of the conferees and identifying themselves as the conferees along with their initials), the Patent Appeal Center may return the application to the examiner for corrective action.
The Patent Appeal Center will review the examiner’s answer to determine whether there is an indication that an appeal conference has been held. If the examiner’s answer does not contain the appropriate indication that an appeal conference has been held (i.e., including the names of the conferees and identifying themselves as the conferees along with their initials), the Patent Appeal Center may return the application to the examiner for corrective action.
Appeal Conference
On the examiner’s answer, below the primary examiner’s signature, the word “Conferees:” should be included, followed by the typed or printed names of the other two appeal conference participants. These two appeal conference participants must place their initials next to their name. This will make the record clear that an appeal conference has been held. If the examiner's answer contains a new ground of rejection, it must clearly designate the rejection as a new ground of rejection. 37 CFR 41.39 specifies that new grounds of rejection must be approved by the Director – i.e., Director of the USPTO. This authority has been delegated to the Technology Center (TC) Directors or their designee(s). The answer must also include the signature of a Technology Center (TC) Director or designee to indicate that they approve the new ground of rejection. See MPEP § 1207.03 and form paragraph 12.279.01
On the examiner’s answer, below the primary examiner’s signature, the word “Conferees:” should be included, followed by the typed or printed names of the other two appeal conference participants. These two appeal conference participants must place their initials next to their name. This will make the record clear that an appeal conference has been held. If the examiner's answer contains a new ground of rejection, it must clearly designate the rejection as a new ground of rejection. 37 CFR 41.39 specifies that new grounds of rejection must be approved by the Director – i.e., Director of the USPTO. This authority has been delegated to the Technology Center (TC) Directors or their designee(s). The answer must also include the signature of a Technology Center (TC) Director or designee to indicate that they approve the new ground of rejection. See MPEP § 1207.03 and form paragraph 12.279.01
New Ground of Rejection in Answer
On the examiner’s answer, below the primary examiner’s signature, the word “Conferees:” should be included, followed by the typed or printed names of the other two appeal conference participants. These two appeal conference participants must place their initials next to their name. This will make the record clear that an appeal conference has been held. If the examiner's answer contains a new ground of rejection, it must clearly designate the rejection as a new ground of rejection. 37 CFR 41.39 specifies that new grounds of rejection must be approved by the Director – i.e., Director of the USPTO. This authority has been delegated to the Technology Center (TC) Directors or their designee(s). The answer must also include the signature of a Technology Center (TC) Director or designee to indicate that they approve the new ground of rejection. See MPEP § 1207.03 and form paragraph 12.279.01
On the examiner’s answer, below the primary examiner’s signature, the word “Conferees:” should be included, followed by the typed or printed names of the other two appeal conference participants. These two appeal conference participants must place their initials next to their name. This will make the record clear that an appeal conference has been held. If the examiner's answer contains a new ground of rejection, it must clearly designate the rejection as a new ground of rejection. 37 CFR 41.39 specifies that new grounds of rejection must be approved by the Director – i.e., Director of the USPTO. This authority has been delegated to the Technology Center (TC) Directors or their designee(s). The answer must also include the signature of a Technology Center (TC) Director or designee to indicate that they approve the new ground of rejection. See MPEP § 1207.03 and form paragraph 12.279.01
Examiner's Answer Content
On the examiner’s answer, below the primary examiner’s signature, the word “Conferees:” should be included, followed by the typed or printed names of the other two appeal conference participants. These two appeal conference participants must place their initials next to their name. This will make the record clear that an appeal conference has been held. If the examiner's answer contains a new ground of rejection, it must clearly designate the rejection as a new ground of rejection. 37 CFR 41.39 specifies that new grounds of rejection must be approved by the Director – i.e., Director of the USPTO. This authority has been delegated to the Technology Center (TC) Directors or their designee(s). The answer must also include the signature of a Technology Center (TC) Director or designee to indicate that they approve the new ground of rejection. See MPEP § 1207.03 and form paragraph 12.279.01
On the examiner’s answer, below the primary examiner’s signature, the word “Conferees:” should be included, followed by the typed or printed names of the other two appeal conference participants. These two appeal conference participants must place their initials next to their name. This will make the record clear that an appeal conference has been held. If the examiner's answer contains a new ground of rejection, it must clearly designate the rejection as a new ground of rejection. 37 CFR 41.39 specifies that new grounds of rejection must be approved by the Director – i.e., Director of the USPTO. This authority has been delegated to the Technology Center (TC) Directors or their designee(s). The answer must also include the signature of a Technology Center (TC) Director or designee to indicate that they approve the new ground of rejection. See MPEP § 1207.03 and form paragraph 12.279.01
SPE Review Requirements
An appeal conference is mandatory in all cases in which an acceptable brief (MPEP § 1205) has been filed. However, if the examiner charged with the responsibility of preparing the examiner’s answer reaches a conclusion that the appeal should not go forward and the supervisory patent examiner (SPE) approves, then no appeal conference is necessary. In this case, the examiner may reopen prosecution and issue another Office action or may prepare a notice of allowability if appropriate. See MPEP § 1207.04. In circumstances where a notice of allowability is prepared, it may be appropriate to include reasons for allowance. See MPEP § 1302.14.
Examiner Sustained – Amendment Options
An appeal conference is mandatory in all cases in which an acceptable brief (MPEP § 1205) has been filed. However, if the examiner charged with the responsibility of preparing the examiner’s answer reaches a conclusion that the appeal should not go forward and the supervisory patent examiner (SPE) approves, then no appeal conference is necessary. In this case, the examiner may reopen prosecution and issue another Office action or may prepare a notice of allowability if appropriate. See MPEP § 1207.04. In circumstances where a notice of allowability is prepared, it may be appropriate to include reasons for allowance. See MPEP § 1302.14.
Statement of Reasons for Allowance
An appeal conference is mandatory in all cases in which an acceptable brief (MPEP § 1205) has been filed. However, if the examiner charged with the responsibility of preparing the examiner’s answer reaches a conclusion that the appeal should not go forward and the supervisory patent examiner (SPE) approves, then no appeal conference is necessary. In this case, the examiner may reopen prosecution and issue another Office action or may prepare a notice of allowability if appropriate. See MPEP § 1207.04. In circumstances where a notice of allowability is prepared, it may be appropriate to include reasons for allowance. See MPEP § 1302.14.
Citations
| Primary topic | Citation |
|---|---|
| Appeal Conference Examiner's Answer Content New Ground of Rejection in Answer | 37 CFR § 41.39 |
| Examiner Sustained – Amendment Options SPE Review Requirements Statement of Reasons for Allowance | MPEP § 1205 |
| Appeal Conference Examiner's Answer Content New Ground of Rejection in Answer | MPEP § 1207.03 |
| Examiner Sustained – Amendment Options SPE Review Requirements Statement of Reasons for Allowance | MPEP § 1207.04 |
| Examiner Sustained – Amendment Options SPE Review Requirements Statement of Reasons for Allowance | MPEP § 1302.14 |
| Appeal Conference Examiner's Answer Content New Ground of Rejection in Answer | Form Paragraph § 12.279.01 |
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 § 1207.01 — Appeal Conference
Source: USPTO1207.01 Appeal Conference [R-10.2019]
An appeal conference is mandatory in all cases in which an acceptable brief (MPEP § 1205) has been filed. However, if the examiner charged with the responsibility of preparing the examiner’s answer reaches a conclusion that the appeal should not go forward and the supervisory patent examiner (SPE) approves, then no appeal conference is necessary. In this case, the examiner may reopen prosecution and issue another Office action or may prepare a notice of allowability if appropriate. See MPEP § 1207.04. In circumstances where a notice of allowability is prepared, it may be appropriate to include reasons for allowance. See MPEP § 1302.14.
The participants of the appeal conference should include (1) the examiner charged with preparation of the examiner’s answer, (2) a supervisory patent examiner (SPE), and (3) another examiner, known as a conferee, having sufficient experience to be of assistance in the consideration of the merits of the issues on appeal. During the appeal conference, consideration should be given to the possibility of dropping cumulative art rejections and eliminating technical rejections of doubtful value.
The examiner responsible for preparing the examiner’s answer should weigh the arguments of the other examiners presented during the appeal conference. If it is determined that the rejection(s) should be maintained, the examiner responsible for preparing the examiner’s answer will prepare the examiner’s answer.
On the examiner’s answer, below the primary examiner’s signature, the word “Conferees:” should be included, followed by the typed or printed names of the other two appeal conference participants. These two appeal conference participants must place their initials next to their name. This will make the record clear that an appeal conference has been held. If the examiner’s answer contains a new ground of rejection, it must clearly designate the rejection as a new ground of rejection. 37 CFR 41.39 specifies that new grounds of rejection must be approved by the Director – i.e., Director of the USPTO. This authority has been delegated to the Technology Center (TC) Directors or their designee(s). The answer must also include the signature of a Technology Center (TC) Director or designee to indicate that they approve the new ground of rejection. See MPEP § 1207.03 and form paragraph 12.279.01
The Patent Appeal Center will review the examiner’s answer to determine whether there is an indication that an appeal conference has been held. If the examiner’s answer does not contain the appropriate indication that an appeal conference has been held (i.e., including the names of the conferees and identifying themselves as the conferees along with their initials), the Patent Appeal Center may return the application to the examiner for corrective action.