How does a substitute examiner’s answer affect a patent appeal?
A substitute examiner’s answer can significantly impact a patent appeal. MPEP 1215.03 states:
“If appellant fails to respond to a substitute examiner’s answer that is written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a) by either filing a reply brief or a reply under 37 CFR 1.111 within 2 months from the mailing of the substitute examiner’s answer, the appeal will sua sponte dismissed by the Board as to the claims subject to the rejection for which the Board has remanded the proceeding.“
This means that if the Board remands a case for further consideration of a rejection, and the examiner issues a substitute answer, you must respond within 2 months. Failure to do so will result in the automatic dismissal of the appeal for the claims affected by the remanded rejection.
Additionally, “Such substitute examiner’s answer may also include a new ground of rejection.” This means you need to carefully review the substitute answer for any new rejections that may require a response.
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