Who can appeal a decision in an inter partes reexamination proceeding to the Federal Circuit?
For inter partes reexamination proceedings commenced on or after November 2, 2002, both the patent owner and the third party requester can appeal a decision of the Patent Trial and Appeal Board (PTAB) to the U.S. Court of Appeals for the Federal Circuit. This is stated in MPEP 2683: “A patent owner and/or a third…
Read MoreWhat 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 MoreHow 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 MoreHow do I request an oral hearing for an inter partes reexamination appeal?
To request an oral hearing for an inter partes reexamination appeal, you must: File a written request as a separate paper captioned “REQUEST FOR ORAL HEARING” Submit the request within two months after the date of the examiner’s answer Pay the fee set forth in 37 CFR 41.20(b)(3) Include a certification that a copy of…
Read MoreCan 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 MoreWhat options does a patent owner have if they disagree with a final rejection in reexamination?
If a patent owner disagrees with a final rejection in reexamination, they have several options: File a petition under 37 CFR 1.181 requesting that the final rejection be withdrawn and prosecution be reopened. File a petition under 37 CFR 1.181 requesting entry of an amendment that was refused by the examiner. File a notice of…
Read MoreWhat 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 MoreWhat 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 MoreWhat are the options for responding to a new ground of rejection in an examiner’s answer?
According to MPEP 1207.03(c), an appellant has two options when responding to a new ground of rejection in an examiner’s answer: Reopen prosecution: File a reply under 37 CFR 1.111 with or without amendment or submission of affidavits or other evidence. This request will be treated as a request to withdraw the appeal. Maintain appeal:…
Read MoreCan 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…
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