Question 1

How does the reply period differ for patent applications under appeal or court review?

Accepted Answer

The reply period for patent applications under appeal or court review may differ from the standard periods. The MPEP Section 710 states:

'See MPEP Chapter 1200 for period for reply when appeal is taken or court review sought.'

This reference to MPEP Chapter 1200 indicates that special rules and timeframes may apply when an application is under appeal or court review. Applicants should consult this chapter for specific guidance on reply periods in these situations.

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Question 2

How are appeals handled when a Patentability Report is involved?

Accepted Answer

When an appeal is taken from the rejection of claims involving a Patentability Report, MPEP 705.01(a) states:

'When an appeal is taken from the rejection of claims, all of which are examinable in the TC preparing a Patentability Report, the application should be transferred to said TC for the purpose of appeal.'

This means:

The TC that prepared the Patentability Report takes jurisdiction of the application
They prepare the examiner's answer for the appeal
If the application is ultimately allowed, that TC may send it to issue
The final classification is determined by the controlling claims remaining in the application

This process ensures that the TC with the most relevant expertise handles the appeal.

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Question 3

How are appeals handled in Secrecy Order patent cases?

Accepted Answer

For patent applications under a Secrecy Order, prosecution proceeds as normal, including issuing final rejections that the applicant must properly reply to. If the applicant files an appeal, it must be completed to prevent abandonment of the application.

However, as noted in MPEP 130, "such appeal will not be set for hearing by the Patent Trial and Appeal Board until the Secrecy Order is removed, unless specifically ordered by the Commissioner for Patents."

Question 4

How are appeals handled in cases involving Patentability Reports?

Accepted Answer

When an appeal is taken from the rejection of claims in a case involving a Patentability Report, specific procedures are followed. According to MPEP 705.01(a):

"When an appeal is taken from the rejection of claims, all of which are examinable in the TC preparing a Patentability Report, the application should be transferred to said TC for the purpose of appeal. The receiving TC will take jurisdiction of the application and prepare the examiner's answer."

This process ensures that:

The TC with the most relevant expertise handles the appeal
The examiner's answer is prepared by the TC most familiar with the subject matter
If the application is allowed after appeal, the receiving TC may send it to issue with its classification determined by the controlling claims remaining in the application

To learn more:

Question 5

Can a premature final rejection be used as grounds for appeal?

Accepted Answer

No, a premature final rejection cannot be used as grounds for appeal. MPEP 706.07(c) explicitly states that the issue of prematureness "may therefore not be advanced as a ground for appeal, or made the basis of complaint before the Patent Trial and Appeal Board." This is because the prematurity of a final rejection is considered a procedural matter rather than a substantive issue related to the patentability of the invention.

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Question 6

Can a patent application under secrecy order be appealed?

Accepted Answer

Can a patent application under secrecy order be appealed?

Yes, patent applications under secrecy orders can be appealed, but with certain restrictions. MPEP 120 states: 'Appeals to the Patent Trial and Appeal Board and petitions to the Director under 37 CFR 1.181 are available to the applicant in secrecy order cases, but those actions will not set aside the secrecy order.' This means that while you can appeal decisions related to the patentability of your application, such appeals cannot challenge or remove the secrecy order itself. The secrecy order remains in effect regardless of the appeal process.

For more information on patent appeal, visit: patent appeal.

For more information on patent procedure, visit: patent procedure.

For more information on patent trial and appeal board, visit: patent trial and appeal board.

Patent Law FAQ

Here’s the complete FAQ:

MPEP 120-Secrecy Orders (1)

Can a patent application under secrecy order be appealed?

Can a patent application under secrecy order be appealed?

MPEP 130-Examination of Secrecy Order Cases (1)

How are appeals handled in Secrecy Order patent cases?

Patent Law (2)

How are appeals handled in Secrecy Order patent cases?

Can a patent application under secrecy order be appealed?

Can a patent application under secrecy order be appealed?

Patent Procedure (1)

Can a patent application under secrecy order be appealed?

Can a patent application under secrecy order be appealed?