Question 1

How does the appeal process differ for rejections and objections in patent applications?

russ.krajec@blueironip.com · Accepted Answer

The appeal process for rejections and objections in patent applications follows different paths:

Rejections: According to the MPEP, a rejection, involving the merits of the claim, is subject to review by the Patent Trial and Appeal Board. This means that if an applicant disagrees with a rejection, they can appeal to the Patent Trial and Appeal Board (PTAB) for review.
Objections: The MPEP states that an objection, if persisted, may be reviewed only by way of petition to the Director of the USPTO. This indicates that objections cannot be appealed to the PTAB but must instead be addressed through a petition process to the Director of the USPTO.

Understanding these distinctions is crucial for patent applicants and attorneys to pursue the appropriate course of action when challenging examiner decisions.

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Question 2

What happens when an examiner's rejection is completely reversed by the Patent Trial and Appeal Board?

Accepted Answer

When an examiner's rejection is completely reversed by the Patent Trial and Appeal Board (PTAB), the case is brought up for immediate action by the examiner. However, this doesn't always mean the application is in condition for immediate allowance. The MPEP states:

"A complete reversal of the examiner's rejection brings the case up for immediate action by the examiner. If the reversal does not place an application in condition for immediate allowance (e.g., the Board has entered a new ground of rejection under 37 CFR 41.50(b) or the application contains withdrawn claims to a non-elected invention), the examiner should refer to the situations outlined in MPEP § 1214.06 for appropriate guidance."

The examiner must take appropriate action based on the PTAB's decision and the current state of the application.

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Question 3

Can new arguments be introduced in a reply brief or oral hearing before the PTAB?

Accepted Answer

The Patent Trial and Appeal Board (PTAB) has specific rules regarding the introduction of new arguments in reply briefs and oral hearings:

For reply briefs: MPEP 1002.02(j) states, "Requests in a reply brief to consider a new argument not previously raised in an appeal brief or not responsive to an argument raised by the examiner. 37 CFR 41.41(b)(2)." This indicates that the PTAB decides on requests to consider new arguments in reply briefs.
For oral hearings: The same section mentions, "Requests in an oral hearing to rely on a new argument based upon a recent relevant decision of the Patent Trial and Appeal Board or a Federal Court. 37 CFR 41.47(e)(2)."

In both cases, the introduction of new arguments is generally not allowed unless specifically permitted by the Board. Parties must request permission to introduce new arguments, and the PTAB has the discretion to decide whether to allow them based on the circumstances and relevance of the new information.

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Question 4

What options does an appellant have when faced with a new ground of rejection?

Accepted Answer

When the Patent Trial and Appeal Board (PTAB) issues a new ground of rejection, the appellant has two options according to MPEP 1213.02:

Reopen prosecution: The appellant can submit an amendment to the rejected claims or new evidence, or both, and have the examiner reconsider the case.
Request rehearing: The appellant can request that the Board rehear the case based on the same record.

The MPEP states:

"When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims:"

It's crucial to note that the appellant must choose one of these options within two months of the Board's decision to avoid termination of the appeal for the rejected claims.

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Question 5

How does the PTAB handle requests for oral arguments?

Accepted Answer

The Patent Trial and Appeal Board (PTAB) has specific procedures for handling requests for oral arguments in trial proceedings. According to MPEP 1002.02(j):

"Requests for oral argument on an issue raised in a paper. 37 CFR 41.124(a) and 42.70."

The process for requesting and conducting oral arguments typically involves:

Filing a request for oral argument, which must be done in a separate paper
Demonstrating why oral argument is necessary to resolve issues raised in a paper
Waiting for the Board to grant or deny the request
If granted, preparing for the oral argument according to the Board's instructions
Participating in the oral argument, which may be conducted in-person or via video conference

It's important to note that the Board has discretion in granting requests for oral arguments. Parties should clearly explain why oral arguments would be beneficial in resolving the issues at hand. The Board may also sua sponte (on its own motion) order oral arguments if it believes they would be helpful in deciding the case.

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Question 6

Who is responsible for reviewing a reissue application when a protest is filed and the patent is in a contested case?

Accepted Answer

When a protest is filed in a reissue application and the related patent is involved in a contested case, the review process involves collaboration between several parties. According to MPEP 1449:

"In consultation with the examiner and the PTAB, a TC TQAS or SPRS will check to see that: It is particularly important that the reissue application not be allowed without the administrative patent judge's approval."

This means that the Technology Center Training Quality Assurance Specialist (TC TQAS) or Supervisory Patent Reexamination Specialist (SPRS) will work with the examiner and the Patent Trial and Appeal Board (PTAB) to review the reissue application. The administrative patent judge's approval is crucial before allowing the reissue application.

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Question 7

What should be included in a request for rehearing after a new ground of rejection?

Accepted Answer

When requesting a rehearing after the Patent Trial and Appeal Board (PTAB) issues a new ground of rejection, the appellant must address specific points in their request. According to MPEP 1213.02, the request for rehearing should include:

An address of the new ground of rejection
A statement with particularity of the points believed to have been misapprehended or overlooked in entering the new ground of rejection
All other grounds upon which rehearing is sought

The MPEP states:

"The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought."

It's crucial to be thorough and specific in addressing the new ground of rejection to give the Board a clear understanding of why you believe the decision should be reconsidered.

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Question 8

Is a PTAB decision containing a new ground of rejection considered final?

Accepted Answer

No, a Patent Trial and Appeal Board (PTAB) decision that includes a new ground of rejection is not considered final. According to MPEP 2681:

A decision which includes a new ground of rejection or a remand will be considered a non-final decision. Until the Board issues a final decision, the parties to the appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under 37 CFR 41.81.

This non-final status allows the patent owner to respond to the new ground of rejection by either:

Reopening prosecution before the examiner
Requesting a rehearing by the Board

The decision becomes final only after these procedures have been completed or the time for response has expired.

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Patent Law FAQ

This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.

MPEP 2600 – Optional Inter Partes Reexamination (1)

Is a PTAB decision containing a new ground of rejection considered final?

MPEP 2681 – Board Decision (1)

Is a PTAB decision containing a new ground of rejection considered final?

Patent Law (1)

Is a PTAB decision containing a new ground of rejection considered final?

Patent Procedure (1)

Is a PTAB decision containing a new ground of rejection considered final?