What 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 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 MoreWhat happens if the applicant fails to cancel claims to non-elected inventions after a final requirement for restriction?
If the applicant fails to cancel claims to non-elected inventions after a final requirement for restriction, the examiner will take specific actions as outlined in the Manual of Patent Examining Procedure (MPEP): The examiner will cancel the non-elected claims in the next Office action. The cancellation will be carried out under the examiner’s authority provided…
Read MoreWhat happens if new evidence is filed after the appeal brief in a patent application?
If new evidence is filed after the appeal brief in a patent application, the examiner must determine whether the evidence overcomes all rejections. According to MPEP 1206: “If the examiner determines that the evidence overcomes all rejections, the examiner should issue a new Office action withdrawing all previous rejections and either allowing the application or…
Read MoreWhat is the procedure for issuing an allowance after a Board reversal in a patent application?
When the Board reverses all rejections of a claim or application, the examiner should promptly issue an allowance. The procedure for issuing an allowance after a Board reversal is outlined in MPEP 1214: “Where the Board has reversed all rejections of a claim or application, the examiner should either promptly allow the claim(s) or issue…
Read MoreCan an examiner reopen prosecution after an appeal brief is filed?
Yes, an examiner can reopen prosecution after an appeal brief is filed under certain circumstances. The MPEP 1206 states: “If the examiner decides to reopen prosecution to enter the new ground of rejection, the examiner must withdraw the appeal by issuing a new Office action that includes the new ground of rejection.” This typically occurs…
Read MoreWhat actions can an examiner take if the Board affirms some rejections but reverses others?
When the Board affirms some rejections but reverses others in a patent application, the examiner has several options. According to MPEP 1214, the examiner should take one of the following actions: Allow the application: If the affirmed rejection(s) can be overcome by an examiner’s amendment, the examiner may allow the application after obtaining approval from…
Read MoreWhat action does the examiner take after a PTAB decision affirms or affirms in part?
When the Patent Trial and Appeal Board (PTAB) affirms or affirms in part the examiner’s decision, the examiner must follow a specific procedure: According to MPEP 1214: “If the Board decision affirms or affirms in part the decision of the examiner, the examiner must await the expiration of the above time periods before taking any…
Read MoreWhat happens if the Board reverses the examiner’s rejection in a patent application?
When the Board reverses the examiner’s rejection in a patent application, the following procedures apply: The application is returned to the examiner. The examiner must take action consistent with the Board’s decision. If the Board’s decision includes an approval for claims, those claims should be allowed. The examiner must follow the Board’s instructions for any…
Read MoreWhen does a patent application stop being considered ‘new’?
A patent application stops being considered ‘new’ when it receives its first action from the examiner. According to MPEP 203.01: A ‘new’ application is a nonprovisional application that has not yet received an action by the examiner. This implies that once the examiner issues any official communication or action on the merits of the application,…
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