What are the consequences of requesting a rehearing instead of filing an amendment in response to a new ground of rejection?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

When an appellant chooses to request a rehearing under 37 CFR 41.50(b)(2) instead of filing an amendment or new evidence under 37 CFR 41.50(b)(1), there are significant consequences. The MPEP outlines these consequences:

“By proceeding in this manner, the appellant waives their right to further prosecution before the examiner. In re Greenfield, 40 F.2d 775, 5 USPQ 474 (CCPA 1930).“

This waiver has specific implications:

• The appellant cannot later choose to reopen prosecution before the examiner.
• The right to amend claims under 37 CFR 41.50(b)(1) is waived.
• The appellant retains only a limited right to rewrite dependent claims not subject to the new grounds of rejection into independent form.

The MPEP further states: “A request for rehearing accompanied by an appropriate amendment of the claims rejected by the Board, and/or by new evidence, does not constitute a proper request for rehearing under 37 CFR 41.50(b)(2), and will be treated as a submission under 37 CFR 41.50(b)(1).“

It’s crucial for appellants to carefully consider their options and the potential consequences before deciding to request a rehearing instead of filing an amendment.