How are appeals handled when a Patentability Report is involved?

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.

When an appeal is taken from the rejection of claims involving a Patentability Report, MPEP 705.01(a) states:

‘When an appeal is taken from the rejection of claims, all of which are examinable in the TC preparing a Patentability Report, the application should be transferred to said TC for the purpose of appeal.’

This means:

• The TC that prepared the Patentability Report takes jurisdiction of the application
• They prepare the examiner’s answer for the appeal
• If the application is ultimately allowed, that TC may send it to issue
• The final classification is determined by the controlling claims remaining in the application

This process ensures that the TC with the most relevant expertise handles the appeal.