Q: When are proceedings considered terminated in a patent application?

According to MPEP 711.02(c) , proceedings in a patent application can be terminated in several situations: Failure to pay the issue fee: When the issue fee is not paid and the application is abandoned for failure to pay the issue fee, proceedings are terminated as of the date the issue fee was due and the application is the same as if it were abandoned after midnight on that date. Loss of interference: If an application is in interference wherein all the claims present in the application correspond to the counts and the application loses the interference as to all the claims, then proceedings on that application are terminated as of the date appeal or review by civil action was due if no appeal or civil action was filed. Decision by the Patent Trial and Appeal Board: As explained in MPEP § 1214.06 . Court decision: As explained in MPEP § 1216.01 . Understanding these scenarios is crucial for patent applicants and attorneys to manage application timelines and priorities effectively. To learn more: termination of proceedings patent application issue fee interference Patent Trial and Appeal Board court decision

Question 1

Who handles power of attorney changes during interference or derivation proceedings?

Accepted Answer

During interference or derivation proceedings, power of attorney changes are handled by a specific entity within the USPTO. According to MPEP 402.08:

While an application is involved in an interference or derivation proceeding, any power of attorney of or revocation of power of attorney should be forwarded to the Patent Trial and Appeal Board for consideration.

This means that the Patent Trial and Appeal Board (PTAB) is responsible for considering and processing any changes to power of attorney during these special proceedings. This differs from the normal procedure for regular patent applications, where such changes would typically be handled by the Office of Patent Application Processing or the examining corps.

To learn more:

Question 2

When are proceedings considered terminated in a patent application?

Accepted Answer

According to MPEP 711.02(c), proceedings in a patent application can be terminated in several situations:

Failure to pay the issue fee:
When the issue fee is not paid and the application is abandoned for failure to pay the issue fee, proceedings are terminated as of the date the issue fee was due and the application is the same as if it were abandoned after midnight on that date.
Loss of interference:
If an application is in interference wherein all the claims present in the application correspond to the counts and the application loses the interference as to all the claims, then proceedings on that application are terminated as of the date appeal or review by civil action was due if no appeal or civil action was filed.
Decision by the Patent Trial and Appeal Board: As explained in MPEP § 1214.06.
Court decision: As explained in MPEP § 1216.01.

Understanding these scenarios is crucial for patent applicants and attorneys to manage application timelines and priorities effectively.

To learn more:

Question 3

What role does the Patent Trial and Appeal Board play in terminating proceedings?

Accepted Answer

The Patent Trial and Appeal Board (PTAB) can play a significant role in terminating proceedings for a patent application. According to MPEP 711.02(c):

Proceedings are terminated in an application after decision by the Patent Trial and Appeal Board as explained in MPEP § 1214.06.

This means that a decision by the PTAB can lead to the termination of proceedings in a patent application. The specific circumstances and procedures for such terminations are detailed in MPEP § 1214.06. This section provides guidance on various scenarios following a Board decision, including:

Rejection of all appealed claims
Allowance of some claims and rejection of others
New grounds of rejection by the Board

Understanding the PTAB's role is crucial for applicants and attorneys involved in appeals or other proceedings before the Board.

To learn more:

Question 4

What precautions are taken to avoid erroneously treating patent applications as abandoned?

Accepted Answer

To avoid erroneously treating patent applications as abandoned, examiners take special precautions, particularly for applications containing a decision of the Patent Trial and Appeal Board.

MPEP 711.04(a) states: "A check should be made of files containing a decision of the Patent Trial and Appeal Board for the presence of allowed claims to avoid erroneously treating the proceedings as terminated."

For proper treatment of any claims that stand allowed, examiners are directed to refer to MPEP § 1214.06, subsections II-IV.

To learn more:

Question 5

What options are available if an examiner refuses to enter an affidavit as untimely?

Accepted Answer

If a patent examiner refuses to enter an affidavit or declaration under 37 CFR 1.130 as untimely, the applicant has a specific recourse. According to MPEP 717.01(f):

Review of an examiner's refusal to enter an affidavit as untimely is by petition and not by appeal to the Patent Trial and Appeal Board. In re Deters, 515 F.2d 1152, 185 USPQ 644 (CCPA 1975); Ex parte Hale, 49 USPQ 209 (Bd. App. 1941).

This means that:

The applicant must file a petition to challenge the examiner's decision
The applicant cannot appeal this specific issue to the Patent Trial and Appeal Board
The petition process is separate from the normal appeal process

It's important to note that this applies specifically to the timeliness of the affidavit submission. If the affidavit is entered but the examiner's decision on the merits is unfavorable, that decision can be appealed through the normal appeal process.

To learn more:

Question 6

What is the process for revoking power of attorney during an interference proceeding?

Accepted Answer

The process for revoking power of attorney during an interference proceeding differs from the standard procedure. According to MPEP 402.08:

While an application is involved in an interference or derivation proceeding, any power of attorney of or revocation of power of attorney should be forwarded to the Patent Trial and Appeal Board for consideration.

To revoke power of attorney during an interference proceeding:

Prepare the revocation document as you normally would.
Instead of submitting it through regular channels, forward the revocation to the Patent Trial and Appeal Board (PTAB).
The PTAB will consider the revocation within the context of the ongoing interference proceeding.
Wait for the PTAB's decision before considering the revocation effective.

This special handling ensures that changes in representation are properly managed within the complex context of an interference proceeding.

To learn more:

Question 7

What is the Patent Trial and Appeal Board's role in reviewing affidavits under 37 CFR 1.131(a)?

Accepted Answer

The Patent Trial and Appeal Board (PTAB) plays a significant role in the review process for affidavits or declarations submitted under 37 CFR 1.131(a). According to MPEP 715.08:

Review of an examiner's determination on the merits of a 37 CFR 1.131(a) affidavit or declaration is by appeal to the Patent Trial and Appeal Board.

This means that if an applicant disagrees with an examiner's decision regarding the substantive content or merits of an affidavit or declaration submitted under 37 CFR 1.131(a), they can appeal this decision to the PTAB. The PTAB then has the authority to review and make a determination on the examiner's decision, providing an important avenue for applicants to challenge substantive issues in the examination process.

To learn more:

Question 8

What happens to a power of attorney during an interference or derivation proceeding?

Accepted Answer

During an interference or derivation proceeding, any changes to the power of attorney must be forwarded to a specific board for review. As stated in MPEP 402.05: While an application is involved in an interference or derivation proceeding, any power of attorney or revocation of power of attorney should be forwarded to the Patent Trial and Appeal Board for consideration. This ensures that the appropriate authority handles changes in representation during these specialized proceedings.

To learn more:

Question 9

How can one appeal the merits of a 37 CFR 1.130 affidavit or declaration?

Accepted Answer

If you wish to appeal the merits of a 37 CFR 1.130 affidavit or declaration, the process is specified in MPEP 717.01(e):

Review on the merits of a 37 CFR 1.130 affidavit or declaration is by appeal to the Patent Trial and Appeal Board. See MPEP § 1201.

This means that if you disagree with the examiner's decision regarding the substance or merits of your affidavit or declaration, you can appeal this decision to the Patent Trial and Appeal Board (PTAB). The process for such appeals is detailed in MPEP § 1201.

To learn more:

37 CFR 1.130

Question 10

How can an application become abandoned through an appeal process?

Accepted Answer

An application can become abandoned through the appeal process in two main ways:

Withdrawal or failure to prosecute an appeal: According to MPEP 711.02(b), 'An application may become abandoned through withdrawal of, or failure to prosecute, an appeal to the Patent Trial and Appeal Board.' For more details, refer to MPEP §§ 1215.01 to 1215.04.
Dismissal of an appeal: The MPEP states, 'An application may become abandoned through dismissal of appeal to the Court of Appeals for the Federal Circuit or civil action, where there was not filed prior to such dismissal an amendment putting the application in condition for issue or fully responsive to the Board's decision.' This situation is further explained in MPEP §§ 1215.04 and 1216.01.

It's crucial for applicants to carefully manage their appeals and respond appropriately to avoid unintentional abandonment.

To learn more:

Question 11

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 12

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?

MPEP 400 - Representative of Applicant or Owner (3)

Who handles power of attorney changes during interference or derivation proceedings?

What is the process for revoking power of attorney during an interference proceeding?

What happens to a power of attorney during an interference or derivation proceeding?

Patent Law (5)

Who handles power of attorney changes during interference or derivation proceedings?

What is the process for revoking power of attorney during an interference proceeding?

What happens to a power of attorney during an interference or derivation proceeding?

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 (4)

Who handles power of attorney changes during interference or derivation proceedings?

What is the process for revoking power of attorney during an interference proceeding?

What happens to a power of attorney during an interference or derivation proceeding?

Can a patent application under secrecy order be appealed?

Can a patent application under secrecy order be appealed?