How does the PTAB handle information disclosure statements filed during an appeal?

The Patent Trial and Appeal Board (PTAB) has a specific procedure for handling information disclosure statements (IDS) filed during an appeal. According to MPEP 1212: “Consideration of information disclosure statements filed while the Board possesses jurisdiction over the appeal will be held in abeyance until the Board’s jurisdiction ends.“ This means that if an appellant…

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What authority does the Patent Trial and Appeal Board have to request additional briefing from appellants?

The Patent Trial and Appeal Board (PTAB) has the authority to request additional briefing from appellants under 37 CFR 41.50(d). This regulation states: “The Board may order appellant to additionally brief any matter that the Board considers to be of assistance in reaching a reasoned decision on the pending appeal.“ This authority allows the Board…

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What are the options available to an appellant after the Board designates a new ground of rejection?

When the Board designates a new ground of rejection under 37 CFR 41.50(b), the appellant has three options for each claim so rejected: Reopen prosecution before the examiner by submitting an appropriate amendment and/or new evidence (37 CFR 41.50(b)(1)) Request rehearing before the Board (37 CFR 41.50(b)(2)) File a request for continued examination (RCE) The…

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Do I need to sign the Notice of Appeal?

The MPEP provides guidance on the signature requirement for a Notice of Appeal: “Although the rules do not require that the notice of appeal be signed, applicants may file notices of appeal which are signed.“ However, it’s important to note that while the Notice of Appeal itself doesn’t require a signature, other documents submitted with…

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Can an examiner request rehearing of a PTAB decision?

Yes, an examiner can request rehearing of a Patent Trial and Appeal Board (PTAB) decision. However, this process is subject to specific guidelines and approvals. The MPEP states: “The examiner may request rehearing of the Board decision. Such a request should normally be made within 2 months of the return of the application to the…

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What should be included in an examiner’s request for rehearing of a PTAB decision?

When an examiner requests rehearing of a Patent Trial and Appeal Board (PTAB) decision, the request must meet specific content requirements. The MPEP 1214.04 outlines these requirements: “The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” This means the examiner must clearly identify and…

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