37 CFR § 1.953 — Examiner’s Right of Appeal Notice ininter partesreexamination. — MPEP Index – BlueIron IP
37 CFR § 1.953 Examiner’s Right of Appeal Notice ininter partesreexamination.
This page consolidates MPEP guidance interpreting 37 CFR § 1.953, including 9 rules 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.
Summary
This section details the examiner's right to appeal claim rejections following a non-final action reply and comments from an inter partes reexamination requester, emphasizing key obligations for timely filing.
What this section covers
- The section covers the process of the examiner’s right to appeal claim rejections in response to a non-final action reply and comments by an inter partes reexamination requester.
Key obligations
- The examiner must provide a notice of appeal if claims are rejected, objections or requirements made, or decisions favor the requester.
- The notice must be timely filed after receiving a non-final action reply and comments from the inter partes reexamination requester.
- Adherence to specific procedural requirements is necessary for the timely and proper filing of the notice of appeal.
Practice notes
- Ensure all required information is included in the appeal notice to comply with procedural requirements.
- Avoid missing the deadline for filing the notice of appeal to prevent potential procedural issues.
Official MPEP § 1.953 — Examiner’s Right of Appeal Notice ininter partesreexamination.
Source: USPTOLast Modified: 10/30/2024 08:50:22
1.953 Examiner’s Right of Appeal Notice in inter partes reexamination.
- (a) Upon considering the comments of the patent owner and the third party requester subsequent to the Office action closing prosecution in an inter partes reexamination, or upon expiration of the time for submitting such comments, the examiner shall issue a Right of Appeal Notice, unless the examiner reopens prosecution and issues another Office action on the merits.
- (b) Expedited Right of Appeal Notice: At any time after the patent owner’s response to the initial Office action on the merits in an inter partes reexamination, the patent owner and all third party requesters may stipulate that the issues are appropriate for a final action, which would include a final rejection and/or a final determination favorable to patentability, and may request the issuance of a Right of Appeal Notice. The request must have the concurrence of the patent owner and all third party requesters present in the proceeding and must identify all of the appealable issues and the positions of the patent owner and all third party requesters on those issues. If the examiner determines that no other issues are present or should be raised, a Right of Appeal Notice limited to the identified issues shall be issued.
- (c) The Right of Appeal Notice shall be a final action, which comprises a final rejection setting forth each ground of rejection and/or final decision favorable to patentability including each determination not to make a proposed rejection, an identification of the status of each claim, and the reasons for decisions favorable to patentability and/or the grounds of rejection for each claim. No amendment can be made in response to the Right of Appeal Notice. The Right of Appeal Notice shall set a one-month time period for either party to appeal. If no notice of appeal is filed, prosecution in the inter partes reexamination proceeding will be terminated, and the Director will proceed to issue and publish a certificate under § 1.997 in accordance with the Right of Appeal Notice.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (c) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (b) and (c) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
- Appeals
- Appeal Notice
- Examination Procedure
- Examiner Action
- Action Types
- Rce Practice
- Inter Partes Reexamination
- Inter Partes Reexam Procedure
| MPEP Section | Rules |
|---|---|
| MPEP § 706 | |
| MPEP § 706.07 |