What is the procedure for issuing an allowance after a Board reversal in a patent application?
When the Board reverses all rejections of a claim or application, the examiner should promptly issue an allowance. The procedure for issuing an allowance after a Board reversal is outlined in MPEP 1214:
“Where the Board has reversed all rejections of a claim or application, the examiner should either promptly allow the claim(s) or issue an action explaining why any claim(s) cannot be allowed.”
The process typically involves:
- Reviewing the Board’s decision to ensure all rejections are reversed.
- Checking for any outstanding issues not addressed by the Board.
- Preparing and issuing a Notice of Allowance if no issues remain.
- If minor issues exist, the examiner may issue an Examiner’s Amendment to resolve them before allowance.
If the examiner believes there are reasons why the claims cannot be allowed despite the Board’s reversal, they must issue a detailed action explaining these reasons. However, this is rare and should only occur when there are clear grounds not previously considered by the Board.
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