What are the time limits for requesting rehearing of a Board decision?
According to MPEP 2682, the time limits for requesting rehearing of a Board decision are as follows: The request must be filed within one month from the date of: The original decision under 37 CFR 41.77(a) The original 37 CFR 41.77(b) decision under the provisions of 37 CFR 41.77(b)(2) The expiration of the time for…
Read MoreCan 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. According to MPEP 2682: In accordance with 37 CFR 41.77(c), the third party requester may once file comments on the patent owner’s submission under 37 CFR 41.77(b)(1) within one month of the date of service of the…
Read MoreHow can a patent owner request reopening of prosecution after a new ground of rejection?
To request reopening of prosecution after a new ground of rejection, the patent owner must: File a response within one month of the Board’s decision (extensions available under 37 CFR 1.956) Submit an appropriate amendment of the newly rejected claim(s) and/or new evidence relating to the new ground(s) of rejection According to MPEP 2682, “Under…
Read MoreWhen can prosecution be reopened after a Board decision in inter partes reexamination?
Reopening prosecution after a Board decision in inter partes reexamination is a rare occurrence. According to MPEP 2682: Proceedings which have been decided by the Board will not be reopened or reconsidered by the primary examiner, unless the provisions of 37 CFR 41.77 apply, or the written consent of the Director of the USPTO is…
Read MoreWhat options does a patent owner have after the Board issues a new ground of rejection?
According to MPEP 2682, after the Board issues a new ground of rejection under 37 CFR 41.77(b), the patent owner has two options: Request rehearing based on the same record under 37 CFR 41.79(a) File a response requesting reopening of prosecution before the examiner, including an appropriate amendment of the newly rejected claim(s) and/or new…
Read MoreWhat is the examiner’s role after a Board decision with a new ground of rejection?
After a Board decision with a new ground of rejection, the examiner’s role is defined in MPEP 2682 under 37 CFR 41.77(d). The key points are: The Board will formally remand the proceeding back to the examiner. The examiner will consider the submissions under 37 CFR 41.77(b)(1) (patent owner’s request to reopen) and 37 CFR…
Read MoreWhat happens if a patent owner doesn’t respond to a new ground of rejection?
If a patent owner does not respond to a new ground of rejection issued by the Board, the consequences are outlined in MPEP 2682: If the patent owner does not request, or does not properly request, rehearing or reopening of prosecution in accordance with 37 CFR 41.77(b), the Board may terminate the appeal proceeding as…
Read MoreWhat is the process for comments and replies after an examiner’s determination under 37 CFR 41.77(d)?
The process for comments and replies after an examiner’s determination under 37 CFR 41.77(d) is outlined in MPEP 2682: The examiner’s determination sets two one-month time periods: One month from the mailing date of the determination for the patent owner and third party requester(s) to file comments on the examiner’s determination One month from the…
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