Is a PTAB decision containing a new ground of rejection considered final?
No, a Patent Trial and Appeal Board (PTAB) decision that includes a new ground of rejection is not considered final. According to MPEP 2681: A decision which includes a new ground of rejection or a remand will be considered a non-final decision. Until the Board issues a final decision, the parties to the appeal to…
Read MoreWhat happens to claims in an interference proceeding after a final decision?
After a final decision in an interference proceeding, the claims are handled as follows: Claims that were not involved in the interference remain pending in the application. Claims that were involved in the interference are disposed of according to the judgment. Claims that correspond to the count(s) of the interference are disposed of in accordance…
Read MoreCan the decision on a petition for inter partes reexamination be appealed?
No, the decision on a petition for inter partes reexamination cannot be appealed. According to MPEP 2648: “This decision is final and nonappealable. See 35 U.S.C. 312(c) and 37 CFR 1.927. No further communication on this matter will be acknowledged or considered.” This means that once the CRU Director has made a decision on the…
Read MoreWhat constitutes a final decision by the Patent Trial and Appeal Board?
The MPEP provides specific criteria for what constitutes a final decision by the Patent Trial and Appeal Board (PTAB). According to MPEP 2301.02, a decision is considered final for the purposes of judicial review under these conditions: “Final means, with regard to a Board action, final for the purposes of judicial review. A decision is…
Read MoreCan a Director’s decision on an inter partes reexamination request be petitioned?
The Director’s decision on an inter partes reexamination request is considered final and cannot be petitioned. The MPEP 2640 clearly states: “The decision ordering reexamination is final and non-appealable. See 35 U.S.C. 312(c) and Heinl v. Godici, 143 F.Supp.2d 593, 596-98 (E.D. Va. 2001).” This means that once the Director has made a decision to…
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