Is a PTAB decision containing a new ground of rejection considered final?
No, a Patent Trial and Appeal Board (PTAB) decision that includes a new ground of rejection is not considered final. According to MPEP 2681:
A decision which includes a new ground of rejection or a remand will be considered a non-final decision. Until the Board issues a final decision, the parties to the appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under 37 CFR 41.81.
This non-final status allows the patent owner to respond to the new ground of rejection by either:
- Reopening prosecution before the examiner
- Requesting a rehearing by the Board
The decision becomes final only after these procedures have been completed or the time for response has expired.
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2681 - Board Decision,
Patent Law,
Patent Procedure