1210 Actions Subsequent to Examiner’s Answer but Before Board’s Decision [R-10.2019]

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byChhabra Law Firm

1210 Actions Subsequent to Examiner’s Answer but Before Board’s Decision [R-10.2019]

I. JURISDICTION OF BOARD

37 CFR 41.35 Jurisdiction over appeal.

  • (a) Beginning of jurisdiction. Jurisdiction over the proceeding passes to the Board upon the filing of a reply brief under § 41.41 or the expiration of the time in which to file such a reply brief, whichever is earlier.
  • (b) End of jurisdiction. The jurisdiction of the Board ends when:
    • (1) The Director or the Board enters a remand order (see §§ 41.35(c), 41.35(e), and 41.50(a)(1)),
    • (2) The Board enters a final decision (see § 41.2) and judicial review is sought or the time for seeking judicial review has expired,
    • (3) An express abandonment which complies with § 1.138 of this title is recognized,
    • (4) A request for continued examination is filed which complies with § 1.114 of this title,
    • (5) Appellant fails to take any required action under §§ 41.39(b), 41.50(a)(2), 41.50(b), or 41.50(d), and the Board enters an order of dismissal, or
    • (6) Appellant reopens prosecution pursuant to § 41.40(b) or in response to a new ground of rejection entered in a decision of the Board (see § 41.50(b)(1)).
  • (c) Remand ordered by the Director. Prior to the entry of a decision on the appeal by the Board (see § 41.50), the Director may sua sponte order the proceeding remanded to the examiner.
  • (d) Documents filed during Board’s jurisdiction. Except for petitions authorized by this part, consideration of any information disclosure statement or petition filed while the Board possesses jurisdiction over the proceeding will be held in abeyance until the Board’s jurisdiction ends.
  • (e) Administrative remands ordered by the Board. If, after receipt and review of the proceeding, the Board determines that the file is not complete or is not in compliance with the requirements of this subpart, the Board may relinquish jurisdiction to the examiner or take other appropriate action to permit completion of the file.

Jurisdiction over the application passes from the Technology Centers to the Board at the time specified in 37 CFR 41.35(a).

Any amendment or other paper relating to the appeal filed thereafter, but prior to the decision of the Board, may be considered by the examiner only in the event the case is remanded for that purpose.

II. ABANDONMENT OF APPEAL: ABANDONMENT, CONTINUED EXAMINATION, OR REFILING OF CASE ON APPEAL

To avoid the rendering of decisions by the Board in applications which appellants have decided to abandon, file a request for continued examination (RCE), or to refile as continuations, appellants should promptly inform the Clerk of the Board in writing as soon as they have positively decided to refile, file an RCE, or abandon an application containing an appeal awaiting a decision. Failure to exercise appropriate diligence in this matter may result in the Board refusing an otherwise proper request to vacate its decision.

See MPEP §§ 1215.01 – 1215.03 concerning the withdrawal of appeals.