37 CFR 41.20, or section 41.20 of Title 37 of the Code of Federal Regulations, defines the filing fees you need to pay after filing an appeal to the Patent Trial and Appeal Board, after the Examiner's Answer has already been set. This is a way for patent applicants who have been rejected twice to have one last shot at appealing the decision. If you're a patent owner, you can appeal the final rejection of any claims once you pay the applicable fees.

More specifically, if your claim has been rejected twice and you still wish to appeal, you'll need to pay the specific fee mentioned in 37 CFR § 41.20(b)(1) and within the time period defined in 37 CFR §§ 1.134 and 1.550(c).

However, if you just want to file an appeal brief in an application or ex parte re-examination, you won't have to pay anything, as of March 19, 2013.

Fees Associated With Appeals

There are many fees associated with appeals, all of which vary depending on the type and stage of appeal. Of course, 37 CFR § 41.20 isn't the only thing that defines the fees you'll need to pay.

The first step in appealing is to file a notice of appeal along with the appeal brief. If you file an appeal brief before filing a notice of appeal, the United States Patent and Trademark Office will treat your appeal brief as a notice of appeal. Once you've done that, that fee schedule is as follows:

  • The petition fee is $400.
  • Fees for a notice of appeal vary:
    • Appeals by a micro entity are $200 (see § 1.29 for more info).
    • Appeals by a small entity are $400 (see § 1.27(a) for more info).
    • Appeals by an organization other than a small or micro entity are $800.
  • Fees for filing a brief in support of an appeal in a reexamination adds on additional fees (in addition to the notice of appeal fees):
    • Micro-entities must pay $500, per § 1.29.
    • Small entities must pay $1,000, per § 1.27(a).
    • Other organizations must pay $2,000.
  • Fees for filing an oral hearing request before the Board according to 35 U.S.C. § 134 include:
    • $325 for micro entities, per § 1.29.
    • $650 for small entities, per § 1.27(a).
    • $1,300 for all other organizations.
  • Fees for forwarding an appeal to the Board include:
    • $500 for a micro entity, per § 1.29.
    • $1,000 for a small entity, per § 1.27(a).
    • $2,000 for all other organizations.

Understanding When You Can Appeal

You can file a notice of appeal after any of your claims have been rejected twice.

An example is if your claim was originally rejected in a parent application. If you file a continuing application and it is rejected again, you have the opportunity to file an appeal along with the continuing application. The claim may have been rejected only once in the continuing application itself, but the first rejection on the parent application qualifies it for an appeal.

You will not be able to officially file an appeal in a continuing application until you have been rejected. You also cannot file an appeal after filing a request for continued examination (RCE) under 37 CFR § 1.114 unless you have been rejected.

If you decide to file an appeal brief, notice of appeal, and an amendment to your patent on the same date your final action notice is mailed, the guidelines set forth in 37 CFR § 1.116 apply. Otherwise, if you file these forms after your final action, you're not guaranteed it will be accepted.

In fact, the only way it might be admitted is if it:

  • Cancels claims or complies with requirements previously defined by the Office.
  • Better establishes previously rejected claims for new considerations.
  • Amends the specification with specific reasons why the amendment was not included earlier.

Make sure you don't file a notice of appeal when sending a reply under 37 CFR § 1.111 to a second non-final rejection letter. This will nullify the notice of appeal, meaning that the Office will ignore it and only respond to the reply under 37 CFR § 1.111. In this case, you'd only need to file a notice of appeal if your claim has been rejected twice. Therefore, filing an appeal, in this case, is premature until there is a second non-final rejection.

If you need help with 37 CFR 41.20, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.