Is there a fee for filing an appeal brief?
As of March 19, 2013, there is no fee for filing an appeal brief in patent applications or ex parte reexamination proceedings. The MPEP 1205.01 states: “Effective March 19, 2013, the statutory fee for filing an appeal brief was adjusted to $0. As long as the fee under 37 CFR 41.20(b)(2) remains $0, the appeal…
Read MoreCan the time for filing an appeal brief be extended?
Yes, the time for filing an appeal brief can be extended. According to MPEP 1205.01: “This 2-month time period for a patent application may be extended under 37 CFR 1.136(a), and if 37 CFR 1.136(a) is not available, under 37 CFR 1.136(b) for extraordinary circumstances.” For patent applications, extensions can be requested under 37 CFR…
Read MoreWhat is an Examiner’s Answer in patent appeals?
An Examiner’s Answer is a response prepared by a patent examiner after an applicant has filed an appeal brief. According to MPEP 1207, the examiner considers the issues on appeal and may take one of several actions, as outlined in 37 CFR 41.39. The MPEP states: “After an appeal brief under 37 CFR 41.37 has…
Read MoreHow should an examiner respond to arguments in an appeal brief?
When responding to arguments in an appeal brief, an examiner should: Address each argument presented by the appellant Provide explanations for disagreements with appellant’s arguments Use headings and subheadings that parallel those in the appellant’s brief The MPEP provides guidance: “A statement of whether the examiner disagrees with each of the arguments of appellant in…
Read MoreCan an examiner reopen prosecution after an appeal brief is filed?
Yes, an examiner can reopen prosecution after an appeal brief is filed under certain circumstances. The MPEP 1206 states: “If the examiner decides to reopen prosecution to enter the new ground of rejection, the examiner must withdraw the appeal by issuing a new Office action that includes the new ground of rejection.” This typically occurs…
Read MoreWhat options does an examiner have after considering an appeal brief?
According to MPEP 1207 and 37 CFR 41.39, after considering the issues raised in an appeal brief, an examiner has several options. The MPEP states: “After an appeal brief under 37 CFR 41.37 has been filed and the examiner has considered the issues on appeal, the examiner may:” While the specific options are not listed…
Read MoreWhat is the time frame for an examiner to provide an answer to an appeal brief?
According to the MPEP, an examiner should provide a written answer to an appeal brief within a specific timeframe: “The examiner should furnish the appellant with a written statement in answer to the appellant’s brief within 2 months after the receipt of the brief by the examiner.“ It’s important to note that while the regulation…
Read MoreWhat is the difference between 37 CFR 1.136(a) and 37 CFR 1.136(b) extensions for appeal briefs?
The key difference between 37 CFR 1.136(a) and 37 CFR 1.136(b) extensions for appeal briefs lies in their applicability and requirements: 37 CFR 1.136(a): Not applicable to appeal brief filing deadlines. 37 CFR 1.136(b): Applicable to appeal brief filing deadlines, but requires showing of sufficient cause. According to MPEP 1205.01: “Extensions of time under 37…
Read MoreWhat is the difference between 37 CFR 1.136(a) and 37 CFR 1.136(b) for appeal brief extensions?
The key differences between 37 CFR 1.136(a) and 37 CFR 1.136(b) for appeal brief extensions are: 37 CFR 1.136(a): Not applicable for appeal brief extensions. 37 CFR 1.136(b): Applicable for appeal brief extensions, but requires a petition showing sufficient cause. MPEP 1205.01 clarifies: “Extensions of time under 37 CFR 1.136(a) for patent applications are not…
Read MoreWhat is the difference between appeal briefs for reissue and non-reissue applications?
The main difference between appeal briefs for reissue and non-reissue applications lies in the presentation of claims. MPEP 1454 states: “There is, however, a difference in practice as to presentation of the copy of the claims in the appeal brief for a reissue application.” In a reissue application appeal brief, you must show all changes…
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