Can a third party requester comment on a patent owner’s response to a new ground of rejection?
Yes, a third party requester can comment on a patent owner’s response to a new ground of rejection. According to MPEP 2682: In accordance with 37 CFR 41.77(c), the third party requester may once file comments on the patent owner’s submission under 37 CFR 41.77(b)(1) within one month of the date of service of the…
Read MoreWhat happens when the PTAB issues a new ground of rejection in an inter partes reexamination?
When the Patent Trial and Appeal Board (PTAB) issues a new ground of rejection in an inter partes reexamination, it triggers specific procedures outlined in MPEP 2681: The decision is considered non-final for judicial review. The patent owner has one month to choose one of two options: Reopen prosecution by filing a response with amendments…
Read MoreIs 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 options does a patent owner have after the Board issues a new ground of rejection?
According to MPEP 2682, after the Board issues a new ground of rejection under 37 CFR 41.77(b), the patent owner has two options: Request rehearing based on the same record under 37 CFR 41.79(a) File a response requesting reopening of prosecution before the examiner, including an appropriate amendment of the newly rejected claim(s) and/or new…
Read MoreWhat is the examiner’s role after a Board decision with a new ground of rejection?
After a Board decision with a new ground of rejection, the examiner’s role is defined in MPEP 2682 under 37 CFR 41.77(d). The key points are: The Board will formally remand the proceeding back to the examiner. The examiner will consider the submissions under 37 CFR 41.77(b)(1) (patent owner’s request to reopen) and 37 CFR…
Read MoreWhat happens if a patent owner doesn’t respond to a new ground of rejection?
If a patent owner does not respond to a new ground of rejection issued by the Board, the consequences are outlined in MPEP 2682: If the patent owner does not request, or does not properly request, rehearing or reopening of prosecution in accordance with 37 CFR 41.77(b), the Board may terminate the appeal proceeding as…
Read MoreHow does the USPTO define a ‘new ground of rejection’ in an Examiner’s Answer?
How does the USPTO define a ‘new ground of rejection’ in an Examiner’s Answer? The USPTO defines a ‘new ground of rejection’ in an Examiner’s Answer based on whether the applicant has had a fair opportunity to react to the thrust of the rejection. According to MPEP 1207.03: “A position or rationale that changes the…
Read MoreWhat is the time limit for responding to a new ground of rejection in an examiner’s answer?
According to MPEP 1207.03(c), the appellant has two months from the date of the examiner’s answer to respond to a new ground of rejection. The MPEP states: “The two month time period for reply is not extendable under 37 CFR 1.136(a), but is extendable under 37 CFR 1.136(b) for patent applications and 37 CFR 1.550(c)…
Read MoreWhat is a substitute examiner’s answer in the context of a remand?
A substitute examiner’s answer is a document prepared by the examiner in response to a remand, particularly when a new ground of rejection is to be entered. MPEP 1211 mentions: “Such a remand may require the examiner to prepare a substitute examiner’s answer to enter the new ground of rejection.” This document allows the examiner…
Read MoreWhat are the options for responding to a new ground of rejection in an examiner’s answer?
According to MPEP 1207.03(c), an appellant has two options when responding to a new ground of rejection in an examiner’s answer: Reopen prosecution: File a reply under 37 CFR 1.111 with or without amendment or submission of affidavits or other evidence. This request will be treated as a request to withdraw the appeal. Maintain appeal:…
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