What is the process for requesting an oral hearing in an inter partes reexamination appeal?
What is the process for requesting an oral hearing in an inter partes reexamination appeal? In inter partes reexamination appeals, parties have the option to request an oral hearing before the Board. The process for requesting an oral hearing is outlined in MPEP 2674: “If an appellant or a respondent (the patent owner or the…
Read MoreWhat role does the Board of Patent Appeals and Interferences play in interference proceedings?
The Board of Patent Appeals and Interferences plays a crucial role in interference proceedings by determining priority of inventions and questions of patentability. According to 35 U.S.C. 135 (pre-AIA): “The Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of patentability.” This means that the Board…
Read MoreHow does the Board handle new grounds of rejection in inter partes reexamination appeals?
How does the Board handle new grounds of rejection in inter partes reexamination appeals? In inter partes reexamination appeals, the Board has the authority to issue new grounds of rejection. According to MPEP 2674: “The Board may also issue new grounds of rejection under 37 CFR 41.77(b). For example, the Board might state the following:…
Read MoreWhat is a remand in patent examination?
A remand in patent examination is when the Director or the Board of Patent Appeals and Interferences (BPAI) returns a case to the examiner for further consideration. According to MPEP 1211, “Both the Director and the Board have the authority to remand a case to the examiner when necessary.” This process allows for additional review…
Read MoreAre there any additional FAQs for MPEP 1211.03 – Remand To Consider Affidavits or Declarations?
No additional FAQs can be generated for this section. The existing FAQs have comprehensively covered the content of MPEP 1211.03, including the circumstances under which the Board may remand an application to the examiner, the purpose of such remands, and the procedures involved. The section is relatively brief and focused, and all key points have…
Read MoreWhat happens to jurisdiction during a remand?
When a case is remanded, the jurisdiction over the appeal is transferred from the Board of Patent Appeals and Interferences (BPAI) back to the examiner. MPEP 1211 states: “In any remand, jurisdiction over the appeal is transferred from the Board back to the examiner.” This transfer of jurisdiction allows the examiner to take further action…
Read MoreCan a remand by the Board be appealed?
No, a remand by the Board of Patent Appeals and Interferences (BPAI) cannot be appealed. MPEP 1211 clearly states: “As specified by 37 CFR 41.50(e), a remand by the Board is not appealable (i.e. not final for purposes of judicial review).” This means that when the Board issues a remand, the decision is not considered…
Read MoreCan the Board or Director remand a proceeding to consider new evidence?
Yes, the Board of Patent Appeals and Interferences (BPAI) or the Director of the USPTO has the authority to remand a proceeding to allow the examiner to consider new evidence. MPEP § 1211.03 states: “If such evidence has not been treated by the examiner, the Board or the Director may remand the proceeding to permit…
Read MoreHow does the Board handle affidavits submitted with a request for rehearing?
The Board of Patent Appeals and Interferences (BPAI) generally does not remand affidavits or declarations submitted with a request for rehearing of its decision, unless a rejection has been made under 37 CFR 41.50(b). MPEP § 1211.03 states: “It is not the custom of the Board to remand affidavits or declarations offered in connection with…
Read MoreWho has the authority to remand a case in patent examination?
According to MPEP 1211, both the Director of the USPTO and the Board of Patent Appeals and Interferences (BPAI) have the authority to remand a case to the examiner. Specifically, the MPEP states: “Both the Director and the Board have the authority to remand a case to the examiner when necessary.” This authority is further…
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