Can a third-party requester comment on a patent owner’s response to a new ground of rejection?
Yes, a third-party requester can comment on a patent owner’s response to a new ground of rejection issued by the Patent Trial and Appeal Board (PTAB) in an inter partes reexamination. According to MPEP 2681: Where the owner has filed a response requesting reopening of prosecution under paragraph (b)(1) of this section, any requester, within…
Read MoreHow can a party seek review of a PTAB decision in inter partes reexamination?
Parties seeking review of a Patent Trial and Appeal Board (PTAB) decision in inter partes reexamination have several options, depending on the nature of the issue. According to MPEP 2681: For procedural matters: File a petition to the USPTO The petition must show a convincing error, abuse of discretion, or policy issue For substantive matters:…
Read MoreWhat happens when the PTAB issues a new ground of rejection in an inter partes reexamination?
When the Patent Trial and Appeal Board (PTAB) issues a new ground of rejection in an inter partes reexamination, it triggers specific procedures outlined in MPEP 2681: The decision is considered non-final for judicial review. The patent owner has one month to choose one of two options: Reopen prosecution by filing a response with amendments…
Read MoreWhat are the possible outcomes of a Patent Trial and Appeal Board decision in an inter partes reexamination?
According to MPEP 2681, the Patent Trial and Appeal Board (PTAB) can issue several types of decisions in an inter partes reexamination: Affirm the examiner’s decision Reverse the examiner’s decision Remand the proceeding to the examiner for further consideration Issue a new ground of rejection The MPEP states: The Patent Trial and Appeal Board, in…
Read MoreIs a PTAB decision containing a new ground of rejection considered final?
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…
Read MoreCan the PTAB recommend claim amendments to make a claim patentable in inter partes reexamination?
No, the Patent Trial and Appeal Board (PTAB) does not have the authority to recommend claim amendments to make a claim patentable in inter partes reexamination. MPEP 2681 explicitly states: Unlike the practice for applications and ex parte reexaminations, the rules do not provide for the Board in its decision to include a statement that…
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