Are there any additional FAQs for MPEP 1211.03 – Remand To Consider Affidavits or Declarations?
No additional FAQs can be generated for this section. The existing FAQs have comprehensively covered the content of MPEP 1211.03, including the circumstances under which the Board may remand an application to the examiner, the purpose of such remands, and the procedures involved. The section is relatively brief and focused, and all key points have…
Read MoreWhat is the examiner’s authority regarding affidavits filed after a notice of appeal?
After a notice of appeal is filed but before the Board takes jurisdiction, the examiner’s authority to consider affidavits or declarations is limited. According to MPEP § 1211.03: “In the case of affidavits or declarations filed after the filing of a notice of appeal, but before a jurisdiction passes to the Board under 37 CFR…
Read MoreHow does the Board handle affidavits submitted with a request for rehearing?
The Board of Patent Appeals and Interferences (BPAI) generally does not remand affidavits or declarations submitted with a request for rehearing of its decision, unless a rejection has been made under 37 CFR 41.50(b). MPEP § 1211.03 states: “It is not the custom of the Board to remand affidavits or declarations offered in connection with…
Read MoreHow are affidavits or other evidence treated when filed after a notice of appeal?
The treatment of affidavits or other evidence filed after a notice of appeal depends on the timing of the submission: If filed after the notice of appeal but before the appeal brief, they may be admitted if: The examiner determines that they overcome all rejections under appeal, and A showing of good and sufficient reasons…
Read MoreCan affidavits or other evidence be submitted after filing an appeal brief?
Yes, affidavits or other evidence can be submitted after filing an appeal brief, but their entry is not guaranteed. According to MPEP 1206: “Affidavits or other evidence filed after the date the appeal brief is filed will not be entered as a matter of right.” The treatment of such evidence is governed by 37 CFR…
Read MoreWhen can affidavits or declarations be considered after a notice of appeal is filed?
Affidavits or declarations filed with a notice of appeal, but before the Board takes jurisdiction, can be considered if the appellant demonstrates why they are necessary and were not presented earlier. As stated in MPEP § 1211.03: “Affidavits or declarations filed with the filing of a notice of appeal but before jurisdiction passes to the…
Read MoreWhat happens to affidavits filed after final rejection but before a notice of appeal?
Affidavits or declarations filed after a final rejection but before a notice of appeal are handled according to specific MPEP sections. MPEP § 1211.03 states: “Affidavits or declarations filed after a final rejection and prior to a notice of appeal are handled as provided in MPEP §§ 715.09, 716, and 716.01.” These sections provide guidance…
Read MoreIs there a requirement for the mode of disclosure to be the same in a 37 CFR 1.130(b) declaration?
No, there is no requirement for the mode of disclosure to be the same in a 37 CFR 1.130(b) declaration. The MPEP clearly states: There is no requirement under 35 U.S.C. 102(b)(1)(B) that the mode of disclosure by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly…
Read MoreCan an affidavit under 37 CFR 1.131(a) be used to overcome all types of rejections?
No, an affidavit under 37 CFR 1.131(a) cannot be used to overcome all types of rejections. MPEP 715.01(a) specifically states: Note that an affidavit or declaration under 37 CFR 1.131(a) cannot be used to overcome a rejection based on a U.S. patent or U.S. patent application publication naming a different inventive entity which claims interfering…
Read MoreWhat are the limitations of 37 CFR 1.131(a) affidavits in patent applications?
While 37 CFR 1.131(a) affidavits are useful for antedating certain prior art references, they have several important limitations: Statutory Bars: As stated in MPEP 715.01, “An affidavit or declaration under 37 CFR 1.131(a) is not appropriate where the reference is a statutory bar under pre-AIA 35 U.S.C. 102(b).” AIA Applications: These affidavits are not applicable…
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