How are appeals handled when a Patentability Report is involved?

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.

To learn more:

Tags: MPEP, patent appeal, patentability report, technology center