What are the consequences if a third party requester fails to file a timely appeal in inter partes reexamination?

If a third party requester fails to file a timely appeal or if their appeal is dismissed in inter partes reexamination, they lose certain rights in the appeal process. However, they may retain some limited participation options depending on the circumstances. According to MPEP 2666.20: “Where the third party requester fails to make a timely…

Read More

How can a patent owner seek review of a Substantial New Question of Patentability (SNQ) determination?

A patent owner can seek review of a Substantial New Question of Patentability (SNQ) determination before the Board along with an appeal of the examiner’s rejections. The MPEP outlines the process: “To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the…

Read More

Can a protestor appeal an examiner’s adverse decision to the Patent Trial and Appeal Board?

No, a protestor cannot appeal an examiner’s adverse decision to the Patent Trial and Appeal Board (PTAB). According to MPEP § 1906, “a protestor cannot appeal to the Patent Trial and Appeal Board from an adverse decision of the examiner.” This limitation is part of the restricted participation allowed for protestors in the patent examination…

Read More

What happens after a final rejection in a reexamination proceeding?

After a final rejection in a reexamination proceeding, the patent owner’s rights to unrestricted further prosecution are limited. The MPEP states: Once a final rejection that is not premature has been entered in a reexamination proceeding, the patent owner no longer has any right to unrestricted further prosecution. Amendments submitted after final rejection are subject…

Read More

What are some special situations involving abandonment in patent applications?

The MPEP outlines several special situations involving abandonment in patent applications: Copying claims from a patent without USPTO suggestion Withdrawal of or failure to prosecute an appeal to the Patent Trial and Appeal Board Dismissal of appeal to the Court of Appeals for the Federal Circuit or civil action Claims suggested for interference near the…

Read More

Can a Supervisory Patent Examiner approve reopening prosecution after an appeal brief has been filed?

Yes, a Supervisory Patent Examiner has the authority to approve reopening prosecution after an appeal brief has been filed. This is specifically mentioned in the MPEP: “Approval of reopening prosecution after the filing of an appeal brief in order to incorporate any new ground of rejection, MPEP § 1207.04.” This provision allows for the introduction…

Read More