What happens if the Board affirms a rejection of some claims but reverses others in inter partes reexamination?
What happens if the Board affirms a rejection of some claims but reverses others in inter partes reexamination? In inter partes reexamination, when the Board issues a decision that affirms some rejections while reversing others, the examiner must follow specific procedures. According to MPEP 2674: “Where the Board decision affirms a rejection of some claims…
Read MoreWhat happens after a Board decision in an ex parte reexamination?
After a Board decision in an ex parte reexamination, the examiner follows procedures similar to those outlined in MPEP § 1214 through § 1214.07, with some exceptions specific to reexamination proceedings. The examiner’s actions depend on whether claims are allowed or rejected. As stated in the MPEP: Claims indicated as allowable but objected to prior…
Read MoreWhat is the timeframe for an examiner to take action after a Board decision in a patent application?
The Manual of Patent Examining Procedure (MPEP) does not specify an exact timeframe for an examiner to take action after a Board decision. However, MPEP 1214 emphasizes the importance of prompt action: “Where the Board has reversed all rejections of a claim or application, the examiner should either promptly allow the claim(s) or issue an…
Read MoreWhat is the time limit for responding to a new ground of rejection by the Board?
The time limit for responding to a new ground of rejection by the Board is 2 months from the date of the Board’s decision. This applies to both options of submitting an amendment/new evidence or requesting a rehearing. The MPEP explicitly states: “The amendment and/or new evidence under 37 CFR 41.50(b)(1), or the request for…
Read MoreCan an examiner reopen prosecution after a Board decision in a patent application?
Yes, an examiner can reopen prosecution after a Board decision in certain circumstances. According to MPEP 1214: “The examiner may reopen prosecution to enter a new ground of rejection after a Board decision only with the written approval of the Technology Center (TC) Director or Deputy TC Director.” This means that reopening prosecution is not…
Read MoreCan an appellant file a Request for Continued Examination (RCE) after a Board decision?
Yes, an appellant can file a Request for Continued Examination (RCE) after a Board decision, but there are specific timing considerations to keep in mind. The MPEP states: “An RCE (accompanied by the appropriate fee and a submission) may be filed after a decision by the Board, but before the filing of a Notice of…
Read MoreWhat happens after the Patent Trial and Appeal Board (PTAB) makes a decision?
After the Patent Trial and Appeal Board (PTAB) makes a decision, the following steps occur: A copy of the decision is provided to the appellant and placed in the Image File Wrapper (IFW). The application is electronically returned to the Technology Center with an updated status reflecting the Board’s decision. Jurisdiction over the application or…
Read MoreHow is the PTAB decision communicated to the appellant?
The Patent Trial and Appeal Board (PTAB) decision is communicated to the appellant through a formal process: As stated in MPEP 1214: “After an appeal to the Board has been decided, a copy of the decision is provided to appellant and placed in IFW.“ This process involves: Providing a copy of the decision directly to…
Read MoreWhat is the procedure for seeking judicial review of a Board decision?
To seek judicial review of a Board decision, an applicant has two options: File a civil action in the U.S. District Court for the Eastern District of Virginia under 35 U.S.C. 145 Appeal directly to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141 The MPEP 1216 states: “The patent applicant…
Read MoreWhat happens if a request for rehearing is filed?
When a request for rehearing is filed, several important processes are set in motion. According to MPEP 1214.03: The Board will render a decision on the request for rehearing. The decision on the request for rehearing is deemed to incorporate the earlier opinion reflecting its decision for appeal, except for portions specifically withdrawn on rehearing.…
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