How does the USPTO handle copending reexamination and interference proceedings?
How does the USPTO handle copending reexamination and interference proceedings? The USPTO handles copending reexamination and interference proceedings as follows: The Board of Patent Appeals and Interferences (BPAI) has jurisdiction over an interference proceeding. The Central Reexamination Unit (CRU) has jurisdiction over any reexamination proceeding. When both proceedings are copending, the BPAI’s jurisdiction over the…
Read MoreWhat happens to the reexamination proceeding when an interference is declared?
What happens to the reexamination proceeding when an interference is declared? When an interference is declared during a pending reexamination proceeding: The jurisdiction over the reexamination shifts to the Board of Patent Appeals and Interferences (BPAI). The reexamination proceeding is usually suspended, but this is not automatic. The BPAI may allow certain aspects of the…
Read MoreWhat happens to an application after an interference proceeding ends?
After an interference proceeding ends, jurisdiction over the application returns to the patent examiner. The examiner’s actions depend on whether there are recommendations in the interference judgment: If there are recommendations, the examiner must reopen prosecution to consider them. If there are no recommendations, the examiner should update the search and may choose to reopen…
Read MoreWhat happens after a derivation proceeding is decided?
After a derivation proceeding is decided, jurisdiction over the application returns to the examiner. The examiner must consider any recommendations for further action and may need to reopen prosecution. As stated in MPEP 2315: “If there is a recommendation for further action in the application, the examiner must reopen prosecution to consider the recommendation. The…
Read MoreWhat is the Board’s jurisdiction during an interference proceeding?
The Board of Patent Appeals and Interferences (BPAI) acquires jurisdiction over any involved file when it initiates a contested case, such as an interference. According to MPEP 2307: “The Board acquires jurisdiction over any involved file when the Board initiates a contested case. Other proceedings for the involved file within the Office are suspended except…
Read MoreWhen does the primary examiner lose jurisdiction over a patent application?
The primary examiner retains jurisdiction over a patent application until the Notice of Allowance is mailed. As stated in MPEP 1305: “Jurisdiction of the application remains with the primary examiner until the Notice of Allowance is mailed.” However, even after the Notice of Allowance, the examiner may still permit certain limited amendments under 37 CFR…
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 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 MoreHow does the jurisdiction change after a PTAB decision?
After a Patent Trial and Appeal Board (PTAB) decision, there is a significant change in jurisdiction over the application or patent: MPEP 1214 states: “After decision by the Board, jurisdiction over an application or patent under ex parte reexamination proceeding passes to the examiner, subject to appellant’s right of appeal or other review, for such…
Read MoreHow can an examiner regain jurisdiction over an application after the Notice of Allowance?
If an examiner needs to regain jurisdiction over an application after the Notice of Allowance has been mailed, they must follow a specific procedure. According to MPEP 1305: “To regain jurisdiction over the application, the examiner must write a letter to the Director requesting it.” This process ensures that any actions taken on the application…
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