What options does an applicant have when faced with a new ground of rejection in an Examiner’s Answer?
Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-27 10 Rules5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. When an applicant encounters a new ground of rejection in…
Read MoreWhat options does an appellant have if a new ground of rejection is designated in an Examiner’s Answer?
Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-27 10 Rules5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. When a new ground of rejection is designated in an…
Read MoreCan amendments be submitted with a reply brief in response to a new ground of rejection?
Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-27 10 Rules5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. No, amendments cannot be submitted with a reply brief in…
Read MoreWhat is the impact of amendments under 37 CFR 1.116 or 41.33 on new grounds of rejection?
Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-27 10 Rules5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. Amendments submitted under 37 CFR 1.116 or 41.33 can affect…
Read MoreWhat happens if an appellant files both an amendment and a request for rehearing in response to a new ground of rejection?
Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-27 This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. When an appellant files both an amendment (or new evidence) and a request for…
Read MoreWhat are examples of actions that do not constitute a new ground of rejection in an Examiner’s Answer?
Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-27 10 Rules5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. According to MPEP 1207.03, the following actions do not constitute…
Read MoreCan an examiner make a rejection final after a first Office action on the merits?
Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-10 10 Rules5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. Generally, an examiner cannot make a rejection final after a…
Read MoreWhat is the procedure for withdrawing a final rejection to apply a new ground of rejection?
Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-10 10 Rules5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. Withdrawing a final rejection to apply a new ground of…
Read MoreWhat constitutes a new ground of rejection in patent examination?
Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-10 10 Rules5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. While MPEP 706.07(e) discusses the withdrawal of final rejections to…
Read MoreWhat should an examiner do if applicant’s arguments are persuasive but a new ground of rejection is necessary?
Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-10 10 Rules5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. When an examiner finds an applicant’s arguments persuasive but determines…
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