How does the Board handle new grounds 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 the Patent Trial and Appeal Board issues a new ground of rejection, specific procedures must be followed. According to MPEP 1213:

See MPEP § 1214.01 concerning the procedure following a new ground of rejection by the Board under 37 CFR 41.50(b).

Key points about new grounds of rejection by the Board:

• The Board has the authority to issue new grounds of rejection under 37 CFR 41.50(b)
• When this occurs, specific procedures outlined in MPEP 1214.01 must be followed
• These procedures typically give the appellant options to respond to the new rejection
• Options may include requesting rehearing or reopening prosecution

It’s crucial for appellants to carefully review MPEP 1214.01 when faced with a new ground of rejection to understand their rights and available courses of action.