What happens if the Board reverses the examiner’s rejection in a patent application?

When the Board reverses the examiner’s rejection in a patent application, the following procedures apply:

  • The application is returned to the examiner.
  • The examiner must take action consistent with the Board’s decision.
  • If the Board’s decision includes an approval for claims, those claims should be allowed.
  • The examiner must follow the Board’s instructions for any further actions.

According to MPEP 1214: “The examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references.” This means the examiner should not initiate a new search for prior art unless specifically instructed by the Board.

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Tags: board decision, Claim Allowance, examiner action, patent application