37 C.F.R. § 41.35

Jurisdiction over appeal

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(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.

[76 FR 72297, Nov. 22, 2011]

Notes of Decisions

Cited in 7 cases (1 in the last 5 years), 2011–2021 · leading case: Odyssey Logistics & Tech. v. Iancu, 959 F.3d 1104 (Fed. Cir. 2020).

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Odyssey Logistics & Tech. v. Iancu, 959 F.3d 1104 (Fed. Cir. 2020). “See 37 C.F.R. § 41.35 (“Prior to the entry of a decision on the appeal by the Board, the Director may sua sponte order the proceeding remanded to the ex- aminer.”

Hyatt v. U.S. Pat. & Trademark Off., 904 F.3d 1361 (Fed. Cir. 2018). “See 37 C.F.R. § 41.35 (a). In 2013, the PTO issued a series of formal office actions, called "Requirements," intended to accelerate examination of Mr.”

Hyatt v. United States Pat. & Trademark Off., 146 F. Supp. 3d 771 (E.D. Va. 2015). “See 37 C.F.R. § 41.35 (b). In either case, the Appeal Board’s jurisdiction never vests.”

Chudik v. Hirshfeld, 987 F.3d 1033 (Fed. Cir. 2021). “Under 37 C.F.R. § 41.35 (a), jurisdiction passes to the Board in an applicant’s appeal, not when the applicant files a notice of appeal or brief, and not when the examiner files an answer, but only when the applicant files a reply brief or the time for filing a reply has…”

Hyatt v. United States Pat. & Trademark Off., 110 F. Supp. 3d 644 (E.D. Va. 2015). · cites it 2× “37 C.F.R. § 41.35 (a). It is worth noting, therefore, that because there is no deadline or requirement for an examiner to file an answer, the examiner can delay or, indeed, halt the appeal process simply by failing to file an answer.”

Abraxis Bioscience, LLC v. Kappos, 10 F. Supp. 3d 53 (D.D.C. 2014). “’s Opp’n at 28-29 (citing 37 C.F.R. § 41.35 ) (“Jurisdiction over appeal.”

In re Riggs, 457 F. App'x 923 (Fed. Cir. 2011). “The Board’s action in this case permitted the Examiner to correct the introduction of a new ground of rejection in the Supplemental Examiner’s Answer in violation of 37 C.”

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