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…
Read MoreWhat 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…
Read MoreWhat is the process for admitting new evidence in a patent appeal?
The process for admitting new evidence in a patent appeal involves several steps and considerations. According to MPEP 1206: “If the examiner determines that the evidence should be entered, prosecution must be reopened if the evidence would at least raise a substantial question regarding the propriety of a pending rejection.” The examiner must first determine…
Read MoreWhat 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…
Read MoreWhat happens if I file a Notice of Appeal with an amendment?
If you file an amendment, a Notice of Appeal, and an appeal brief on the same date after receiving a final action, the rules under 37 CFR 1.116 apply. The MPEP states: “If appellant files an amendment, a notice of appeal and an appeal brief on the same date after the mailing of a final…
Read MoreDo 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…
Read MoreCan new arguments be presented in a Pre-Appeal Brief Request?
Can new arguments be presented in a Pre-Appeal Brief Request? No, new arguments should not be presented in a Pre-Appeal Brief Request. The MPEP clearly states: “No new arguments or evidence may be included in the request.” (MPEP 1204.02) The purpose of the Pre-Appeal Brief Request is to review the existing record and arguments. Applicants…
Read MoreWhat is the process for appealing a decision to the U.S. Court of Appeals for the Federal Circuit?
The process for appealing a decision to the U.S. Court of Appeals for the Federal Circuit involves several steps: File a written notice of appeal directed to the Director in the U.S. Patent and Trademark Office File a copy of the notice of appeal with the Board File a copy of the notice of appeal…
Read MoreCan 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…
Read MoreWhat 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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