What is the process for filing a notice of appeal in ex parte reexamination?
The process for filing a notice of appeal in ex parte reexamination is outlined in MPEP 2273. Here are the key steps: File the notice of appeal: Submit the notice of appeal to the USPTO, accompanied by the fee set forth in 37 CFR 41.20(b)(1). Include required parts: The notice of appeal should include: A…
Read MoreWhat fees are associated with requesting an oral hearing in a patent reexamination appeal?
Requesting an oral hearing in a patent reexamination appeal involves specific fees as outlined in MPEP 2276: The primary fee is set forth in 37 CFR 41.20(b)(3) and must be submitted with the written request for the oral hearing. If the appellant wishes to petition for a closed hearing, an additional petition fee as set…
Read MoreWhat is an examiner’s answer in an inter partes reexamination proceeding?
An examiner’s answer is a written response prepared by the primary examiner in an inter partes reexamination proceeding. It addresses the arguments presented in the appellant’s and/or requester’s briefs. According to MPEP 2677, the examiner’s answer should include: An explanation of the invention claimed and references relied upon Grounds of rejection Reasons for patentability Responses…
Read MoreWhat happens if an examiner decides not to proceed with an appeal?
If an examiner decides not to proceed with an appeal, the prosecution is reopened, and a new non-final Office action is issued. MPEP 2676 clearly states: “If the examiner reaches the conclusion that the appeal should not go forward, no appeal conference is held. Prosecution is reopened, and the examiner issues a new non-final Office…
Read MoreWhat are the deadlines for requesting an oral hearing in a patent reexamination appeal?
The deadlines for requesting an oral hearing in a patent reexamination appeal are strictly defined in MPEP 2276: “[The appellant] must file a written request for such hearing accompanied by the fee set forth in 37 CFR 41.20(b)(3) within two months after the date of the examiner’s answer or supplemental examiner’s answer. The time for…
Read MoreWhat is the role of the Central Reexamination Unit (CRU) in the appeal process?
The Central Reexamination Unit (CRU) plays a crucial role in managing the flow of documents and proceedings in the appeal process. MPEP 2676 outlines this role: “All appellant and respondent briefs will be processed by the Board and the reexamination proceeding then forwarded to the Central Reexamination Unit (CRU). The CRU will forward the reexamination…
Read MoreWhen can an examiner reopen prosecution after an appeal brief has been filed?
An examiner can reopen prosecution after an appeal brief has been filed to enter a new ground of rejection, but only with approval from the supervisory patent examiner. According to MPEP 1207.04: “The examiner may, with approval from the supervisory patent examiner, reopen prosecution to enter a new ground of rejection in response to appellant’s…
Read MoreWhat is a Notice of Appeal in patent applications?
A Notice of Appeal is a formal document filed by an applicant who is dissatisfied with the primary examiner’s decision in the second or subsequent rejection of their claims. It allows the applicant to appeal to the Patent Trial and Appeal Board (PTAB) for review of the examiner’s rejection. According to MPEP 1204, “Under 37…
Read MoreCan time periods for filing petitions or replies be extended in the appeal process?
The time periods set forth in 37 CFR 41.40 for filing petitions or replies in the appeal process have specific extension rules: These time periods are not extendable under 37 CFR 1.136(a). They are extendable under 37 CFR 1.136(b) for patent applications. For ex parte reexamination proceedings, extensions are possible under 37 CFR 1.550(c). The…
Read MoreCan the PTAB remand a case to the examiner after requesting additional briefing?
Yes, the Patent Trial and Appeal Board (PTAB) can remand a case to the examiner after requesting additional briefing from the appellant. MPEP 1212 states: “Also, after an appellant has replied to a requirement under 37 CFR 41.50(d), a remand by the Board to the examiner may be appropriate to permit the examiner to respond…
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