Are oral hearings in inter partes reexamination appeals open to the public?
Generally, oral hearings in inter partes reexamination appeals are open to the public as observers, subject to the Board’s admittance procedures. However, there is a process by which a hearing can be closed to the public. According to MPEP 2680: “Where the appeal involves reexamination proceedings, oral hearings are open to the public as observers…
Read MoreCan new arguments be presented during an oral hearing?
Generally, new arguments cannot be presented during an oral hearing. Participants are limited to evidence and arguments previously considered by the primary examiner and presented in the briefs. However, there is an exception for new arguments based on recent relevant decisions. MPEP 2680 states: “At the oral hearing, each appellant and respondent may only rely…
Read MoreWhat happens if a notice of appeal is defective in ex parte reexamination?
If a notice of appeal is defective in ex parte reexamination, the patent owner will be notified and given an opportunity to cure the defect(s). The MPEP 2273 states: “Where a notice of appeal is defective, the patent owner will be so notified. In third party requested reexaminations, Form PTOL-475 will be used to provide…
Read MoreAre extensions of time available for responding to PTAB requests for additional briefing?
Extensions of time for responding to Patent Trial and Appeal Board (PTAB) requests for additional briefing are limited. According to MPEP 1212: “Extensions of time are only available under 37 CFR 1.136(b).“ This means that extensions are not automatically granted and are subject to stricter requirements than standard extensions. Under 37 CFR 1.136(b), extensions may…
Read MoreWhat is the process for petitioning to designate a new ground of rejection in an examiner’s answer?
The process for petitioning to designate a new ground of rejection in an examiner’s answer is outlined in 37 CFR 41.40. Here are the key points: The petition must be filed within two months from the entry of the examiner’s answer and before filing any reply brief. The petition should be filed under 37 CFR…
Read MoreWhat should be included in a reply brief addressing a new ground of rejection?
When filing a reply brief to address a new ground of rejection, MPEP 1207.03(c) outlines specific requirements: Identification page: Include appellant’s name(s), application number, filing date, invention title, examiner’s name and art unit, and the title “Reply Brief”. Argument page(s): Address each new ground of rejection in compliance with 37 CFR 41.37(c)(1)(vii). The reply brief…
Read MoreWhat are the consequences of introducing a new ground of rejection in an Examiner’s Answer?
What are the consequences of introducing a new ground of rejection in an Examiner’s Answer? Introducing a new ground of rejection in an Examiner’s Answer can have significant procedural consequences: Reopening of prosecution: If the examiner designates a rejection as a new ground, prosecution must be reopened, allowing the applicant to submit a reply under…
Read MoreWhen does the Board of Patent Appeals and Interferences gain jurisdiction over an appeal?
The Board of Patent Appeals and Interferences (BPAI) gains jurisdiction over an appeal when: A reply brief is filed under 37 CFR 41.41, or The time to file such a reply brief expires, whichever occurs earlier. This is specified in 37 CFR 41.35(a), which states: “Jurisdiction over the proceeding passes to the Board upon the…
Read MoreWhat is the proper procedure if an applicant wants to appeal after filing an RCE?
If an applicant wants to appeal after filing a Request for Continued Examination (RCE), they must follow a specific procedure. According to MPEP 1204.01, the proper steps are: Wait for the examiner to issue a new Office action after the RCE is filed If the new Office action is a final rejection, file a new…
Read More