MPEP § 2315 — Action After a Derivation Proceeding is Decided (Annotated Rules)
§2315 Action After a Derivation Proceeding is Decided
This page consolidates and annotates all enforceable requirements under MPEP § 2315, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Action After a Derivation Proceeding is Decided
This section addresses Action After a Derivation Proceeding is Decided. Primary authority: 35 U.S.C. 135(b). Contains: 2 requirements, 3 guidance statements, 1 permission, and 4 other statements.
Key Rules
Derivation Proceedings (AIA)
If there are claims that are not finally disposed of in the judgment, the examiner should update the search and may reopen prosecution for any claim not disposed of in the judgment, where appropriate.
Judgment against a claim in a derivation proceeding finally disposes of the claim. No further action is needed from the examiner on that claim. If no claim remains allowable to the applicant, a notice of abandonment should be issued.
Judgment against a claim in a derivation proceeding finally disposes of the claim. No further action is needed from the examiner on that claim. If no claim remains allowable to the applicant, a notice of abandonment should be issued.
Judgment against a claim in a derivation proceeding finally disposes of the claim. No further action is needed from the examiner on that claim. If no claim remains allowable to the applicant, a notice of abandonment should be issued.
PTAB Jurisdiction
Jurisdiction over an application returns to the examiner once the derivation proceeding has terminated. If there is a recommendation for further action in the application, the examiner must reopen prosecution to consider the recommendation. The examiner must enter any recommended rejection, and must maintain the rejection unless the applicant by amendment or submission of new evidence overcomes the rejection to the examiner’s satisfaction.
Jurisdiction over an application returns to the examiner once the derivation proceeding has terminated. If there is a recommendation for further action in the application, the examiner must reopen prosecution to consider the recommendation. The examiner must enter any recommended rejection, and must maintain the rejection unless the applicant by amendment or submission of new evidence overcomes the rejection to the examiner’s satisfaction.
Jurisdiction over an application returns to the examiner once the derivation proceeding has terminated. If there is a recommendation for further action in the application, the examiner must reopen prosecution to consider the recommendation. The examiner must enter any recommended rejection, and must maintain the rejection unless the applicant by amendment or submission of new evidence overcomes the rejection to the examiner’s satisfaction.
Correspondence Address Requirements
It is possible that extraordinary remedies might be provided for by the Board in its judgment. For example, inventorship of an application might be changed, as well as ownership, and as a consequence the application or patent’s correspondence address and representatives may need to be updated. See 35 U.S.C. 135(b). Examiners should consult a Technology Center Practice Specialist if any questions arise regarding remedies provided for in a derivation proceeding.
It is possible that extraordinary remedies might be provided for by the Board in its judgment. For example, inventorship of an application might be changed, as well as ownership, and as a consequence the application or patent’s correspondence address and representatives may need to be updated. See 35 U.S.C. 135(b). Examiners should consult a Technology Center Practice Specialist if any questions arise regarding remedies provided for in a derivation proceeding.
Estoppel After Judgment
It is possible that extraordinary remedies might be provided for by the Board in its judgment. For example, inventorship of an application might be changed, as well as ownership, and as a consequence the application or patent’s correspondence address and representatives may need to be updated. See 35 U.S.C. 135(b). Examiners should consult a Technology Center Practice Specialist if any questions arise regarding remedies provided for in a derivation proceeding.
Citations
| Primary topic | Citation |
|---|---|
| Correspondence Address Requirements Estoppel After Judgment | 35 U.S.C. § 135(b) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2315 — Action After a Derivation Proceeding is Decided
Source: USPTO2315 Action After a Derivation Proceeding is Decided [R-08.2017]
Jurisdiction over an application returns to the examiner once the derivation proceeding has terminated. If there is a recommendation for further action in the application, the examiner must reopen prosecution to consider the recommendation. The examiner must enter any recommended rejection, and must maintain the rejection unless the applicant by amendment or submission of new evidence overcomes the rejection to the examiner’s satisfaction.
If there are claims that are not finally disposed of in the judgment, the examiner should update the search and may reopen prosecution for any claim not disposed of in the judgment, where appropriate.
Judgment against a claim in a derivation proceeding finally disposes of the claim. No further action is needed from the examiner on that claim. If no claim remains allowable to the applicant, a notice of abandonment should be issued.
It is possible that extraordinary remedies might be provided for by the Board in its judgment. For example, inventorship of an application might be changed, as well as ownership, and as a consequence the application or patent’s correspondence address and representatives may need to be updated. See 35 U.S.C. 135(b). Examiners should consult a Technology Center Practice Specialist if any questions arise regarding remedies provided for in a derivation proceeding.