What happens to unamended patent claims in reexamination after a Board decision?
The treatment of unamended patent claims in reexamination after a Board decision depends on whether the claim is rejected or allowed. If an unamended patent claim is rejected and the Board affirms the rejection, the claim will be canceled. However, dependent claims based on the rejected unamended patent claim may still be confirmed or deemed…
Read MoreWhat are the time limits for requesting rehearing of a Board decision?
According to MPEP 2682, the time limits for requesting rehearing of a Board decision are as follows: The request must be filed within one month from the date of: The original decision under 37 CFR 41.77(a) The original 37 CFR 41.77(b) decision under the provisions of 37 CFR 41.77(b)(2) The expiration of the time for…
Read MoreWhen can prosecution be reopened after a Board decision in inter partes reexamination?
Reopening prosecution after a Board decision in inter partes reexamination is a rare occurrence. According to MPEP 2682: Proceedings which have been decided by the Board will not be reopened or reconsidered by the primary examiner, unless the provisions of 37 CFR 41.77 apply, or the written consent of the Director of the USPTO is…
Read MoreWhat are the possible outcomes of a Patent Trial and Appeal Board decision in an inter partes reexamination?
According to MPEP 2681, the Patent Trial and Appeal Board (PTAB) can issue several types of decisions in an inter partes reexamination: Affirm the examiner’s decision Reverse the examiner’s decision Remand the proceeding to the examiner for further consideration Issue a new ground of rejection The MPEP states: The Patent Trial and Appeal Board, in…
Read MoreWhat are the options for a patent owner to appeal a decision of the Board in a reexamination proceeding?
A patent owner who is not satisfied with the decision of the Board in a reexamination proceeding has limited options for appeal. According to MPEP 2279, “The patent owner may appeal the decision of the Board only to the United States Court of Appeals for the Federal Circuit pursuant to 35 U.S.C. 141.” This applies…
Read MoreWhat options does a patent owner have after the Board issues a new ground of rejection?
According to MPEP 2682, after the Board issues a new ground of rejection under 37 CFR 41.77(b), the patent owner has two options: Request rehearing based on the same record under 37 CFR 41.79(a) File a response requesting reopening of prosecution before the examiner, including an appropriate amendment of the newly rejected claim(s) and/or new…
Read MoreWhat is the timeframe for appealing a Board decision to the Federal Circuit in an inter partes reexamination?
The timeframe for appealing a Board decision to the U.S. Court of Appeals for the Federal Circuit in an inter partes reexamination is clearly defined in MPEP 2662: The time for the patent owner and/or the third party requester to file a notice of appeal to the U.S. Court of Appeals for the Federal Circuit…
Read MoreWhat is the examiner’s role after a Board decision with a new ground of rejection?
After a Board decision with a new ground of rejection, the examiner’s role is defined in MPEP 2682 under 37 CFR 41.77(d). The key points are: The Board will formally remand the proceeding back to the examiner. The examiner will consider the submissions under 37 CFR 41.77(b)(1) (patent owner’s request to reopen) and 37 CFR…
Read MoreHow are dependent claims treated after a Board decision in reexamination?
The treatment of dependent claims after a Board decision in reexamination depends on the status of the independent claim and whether the claims were amended: If a rejected amended independent claim has a dependent claim that was previously objected to as being allowable except for its dependency, both claims will be canceled. If an unamended…
Read MoreWhat happens if a patent owner doesn’t respond to a new ground of rejection?
If a patent owner does not respond to a new ground of rejection issued by the Board, the consequences are outlined in MPEP 2682: If the patent owner does not request, or does not properly request, rehearing or reopening of prosecution in accordance with 37 CFR 41.77(b), the Board may terminate the appeal proceeding as…
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