What should be included in an examiner’s request for rehearing of a PTAB decision?
When an examiner requests rehearing of a Patent Trial and Appeal Board (PTAB) decision, the request must meet specific content requirements. The MPEP 1214.04 outlines these requirements:
“The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.”
This means the examiner must clearly identify and explain the specific aspects of the PTAB’s decision that they believe were misunderstood or not considered. Additionally, there are limitations on what can be included:
“Arguments not raised in the answers before the Board and evidence not previously relied upon in the answers are not permitted in the request for rehearing except that the examiner may present a new argument based upon a recent relevant decision of either the Board or a Federal Court.”
In essence, the request should focus on:
- Points misapprehended or overlooked by the Board
- Arguments and evidence previously presented in the examiner’s answers
- New arguments only if based on recent relevant decisions
The request should also set a period of 2 months for the appellant to file a reply. Examiners should ensure their request adheres to these guidelines to increase the likelihood of it being considered.
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