Appeals will definitely be tested on the exam and probably to a fairly large extent. Appeal topics to know cold include; the Appeal Brief, actions after an appeal and the withdrawal or dismissal of the appeal.

Appeal

Who can appeal and when?
Once the claims of an application have been rejected twice, the applicant may appeal:
1. a patent owner involved in a reexamination proceeding may appeal from the final rejection
2. a third party may appeal from the final decision of the administrative patent judge in an inter partes proceeding

Rules governing Appeal briefs:
1. after filing a Notice of Appeal, the appellant must also file an Appeal Brief
2. the Appeal Brief is due 2 months from the date the Notice of Appeal is filed by the appellant
3. the applicant has two months from the receipt date on the Notice of Appeal this time may be extended
4. extra days are added to the calendar day of the original period as opposed to being added to the day it would have been due when said last day is a Sat, Sun or Fed holiday
5. although the failure to file an Appeal Brief within permissible time will result in a dismissal of an appeal, if any claims stand allowed, the application will not become abandoned by the dismissal, but will be returned to the examiner for action on the allowed claims

A sample timeline for an Appeal Brief:
1. 9/19/02 Notice of Appeal
2. 11/19/02 Appeal Brief is initially due; however, the nonstatutory time period is extended under 37 C.F.R. 1.136(a)
3. 3/18/03 Appeal Brief actually filed (with a 4 month extension)
a. the failure to file the brief within permissible time will result in the dismissal of appeal

Withdrawing an appeal:
If an application is appealed, and then the applicant became aware of prior art publications material to the patentability of a claim, he or she should request to withdraw the appeal

The applicant can withdraw the appeal by:
1. filing a request for a continuing examination of the application and notifying the Board of the change
2. an appellant may withdraw an appeal at any time, however, unless there are claims allowed, the withdraw will result in the abandonment of the application

Reply brief:
1. the appellant may file a reply brief after receiving the examiner's answer
2. filing a reply brief after the examiner's answer is the applicant's right, but the examiner may choose whether or not to take action on it

Amendments to an appeal:
The entry of a new amendment, new affidavit, or other new evidence in an application on appeal is not a matter of right, the Board may always refuse an amendment

Jurisdiction is transferred:
1. from the examiner to the Board within 2 months from the examiner's answer, plus mail room time
2. after a supplemental examiner's answer has been mailed, pursuant to a remand from the Board
3. after the examiner has notified the appellant by written communication that the reply brief has been entered and considered and the application will be forwarded to the Board

Rehearing:
Once a decision is made by the Board, the applicant will have two months to request a rehearing

Decision by the Board:

If the Board decides that no claims are allowed, then:
1. the proceedings in the application are terminated - this will take effect as of the date the time for filing a court action has expired
2. the application is no longer considered as pending and it will be abandoned

If the Board decides any claims are allowed:
1. the appellant is not required to file a reply
2. an applicant who is dissatisfied with a decision by the Board may appeal the decision to the U.S. Court of appeals for Federal Circuit, or may have a remedy by civil action against the commissioner in a U.S. District Court for the District of Columbia