When does an examiner prepare an Examiner’s Answer?
According to MPEP 1207, an examiner prepares an Examiner’s Answer after two key events have occurred: An appeal brief has been filed by the applicant under 37 CFR 41.37 The examiner has considered the issues on appeal The MPEP states: “After an appeal brief under 37 CFR 41.37 has been filed and the examiner has…
Read MoreWhat is the ‘summary of claimed subject matter’ in a patent appeal brief?
The ‘summary of claimed subject matter’ is a required component of a patent appeal brief, as outlined in MPEP 1205.02. According to the MPEP, it should include: “A concise explanation of the subject matter defined in each of the rejected independent claims, which shall refer to the specification in the Record by page and line…
Read MoreHow should arguments be presented in a patent appeal brief?
According to MPEP 1205.02, arguments in a patent appeal brief should be presented as follows: Each ground of rejection must be argued under a separate heading that clearly identifies the ground of rejection being contested. For each ground of rejection applying to two or more claims, the claims may be argued separately, as a group,…
Read MoreCan new evidence be included in a patent appeal brief?
No, new evidence cannot be included in a patent appeal brief. MPEP 1205.02 clearly states: “37 CFR 41.37(c)(2) prohibits the inclusion in a brief of any new or non-admitted amendment, affidavit or other evidence.” If an appellant wishes to have new evidence considered, they must follow a different process: The appellant must seek review of…
Read MoreWhat happens if a patent appeal brief is non-compliant?
If a patent appeal brief is found to be non-compliant with the requirements set forth in 37 CFR 41.37, several consequences may follow. According to MPEP 1205.02: “A brief that is filed on or after January 23, 2012 that fails to comply with the requirements set forth in 37 CFR 41.37(c) shall be held to…
Read MoreWhat is the ‘claims appendix’ in a patent appeal brief?
The ‘claims appendix’ is a required component of a patent appeal brief, as specified in MPEP 1205.02. According to the MPEP: “An appendix containing a copy of the claims involved in the appeal.” Key points about the claims appendix: It should contain a clean copy of the claims. The claims should not include any markings…
Read MoreWhat are the requirements for an appeal brief in a patent application?
An appeal brief in a patent application must comply with the requirements set forth in 37 CFR 41.37. The key requirements include: Only one copy of the appeal brief is required. The brief must be filed within two months from the date of filing the notice of appeal. The appeal brief fee is $0.00. The…
Read MoreWhat regulation governs Appeal Briefs in patent cases?
Appeal Briefs in patent cases are governed by 37 CFR 41.37. This regulation outlines the requirements, content, and procedure for submitting an Appeal Brief to the Patent Trial and Appeal Board (PTAB). As stated in MPEP 1205: “37 CFR 41.37 Appeal brief.” This regulation provides detailed guidelines on what must be included in an Appeal…
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