How does the automatic two-month extension work for responses to final rejections in reexamination?
In ex parte reexamination proceedings, an automatic two-month extension is granted for the first response to a final rejection. Key points include: The filing of a timely first response to a final rejection is construed as including a request to extend the shortened statutory period for an additional two months. This applies even if the…
Read MoreAre there any restrictions on when a patent owner can appeal in ex parte reexamination?
Yes, there are restrictions on when a patent owner can appeal in ex parte reexamination. The MPEP 2273 specifies that “The patent owner may appeal to the Board only after the final rejection of the claims.” This means that a patent owner cannot appeal intermediate office actions but must wait until a final rejection is…
Read MoreCan a patent owner amend claims after a final rejection in reexamination?
While a patent owner can submit amendments after a final rejection in reexamination, they do not have an absolute right to amend claims at this stage. The MPEP states: It should be kept in mind that a patent owner cannot, as a matter of right, amend any finally rejected claims, add new claims after a…
Read MoreHow does the examiner determine whether to issue an ACP or a final rejection in ex parte reexamination?
The examiner’s decision to issue an Action Closing Prosecution (ACP) or a final rejection in ex parte reexamination depends on specific criteria outlined in the MPEP. According to MPEP 2260: “If the patent owner’s response overcomes all rejections and objections, a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) should be issued. If…
Read MoreWhen should a Notice of Allowability be issued?
A Notice of Allowability should be issued promptly whenever an application has been placed in condition for allowance. The MPEP 1302.03 states: “In all instances, both before and after final rejection, in which an application is placed in condition for allowance, applicant should be notified promptly of allowability of the claims by a Notice of…
Read MoreWhen can an applicant petition against a final restriction requirement with linking claims?
An applicant has two options for petitioning against a final restriction requirement with linking claims: Petition immediately after the restriction is made final, without waiting for a final action on the merits of the linking claims. Defer the petition until after the linking claims have been finally rejected, but no later than the notice of…
Read MoreWhat happens if I file a Notice of Appeal with an amendment?
If you file an amendment, a Notice of Appeal, and an appeal brief on the same date after receiving a final action, the rules under 37 CFR 1.116 apply. The MPEP states: “If appellant files an amendment, a notice of appeal and an appeal brief on the same date after the mailing of a final…
Read MoreCan a Notice of Allowability be issued after a final rejection?
Yes, a Notice of Allowability can be issued after a final rejection. The MPEP 1302.03 explicitly states: “In all instances, both before and after final rejection, in which an application is placed in condition for allowance, applicant should be notified promptly of allowability of the claims by a Notice of Allowability PTOL-37.” This means that…
Read MoreHow are actions on amendments after final rejection handled in patent examination?
Actions on amendments submitted after final rejection are among the exceptions to partial signatory authority in patent examination. According to MPEP 1005, these actions require the signature of a primary examiner, Technology Center Director, or practice specialist. The specific guidance for handling such amendments is provided in MPEP § 714.12, which states: “Once a final…
Read MoreCan a new Office action be made final when reopening prosecution after an appeal?
Yes, a new Office action containing a new ground of rejection can be made final when reopening prosecution after an appeal, but only under specific circumstances. According to MPEP 1207.04: “The Office action containing a new ground of rejection may be made final if the new ground of rejection was (A) necessitated by amendment, or…
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