What is the time limit for filing an appeal in an inter partes reexamination proceeding?
According to MPEP 2683, the time limit for filing an appeal in an inter partes reexamination proceeding is specified in 37 CFR 1.304(a)(1): “The time for filing the notice of appeal to the U.S. Court of Appeals for the Federal Circuit (§ 1.302) or for commencing a civil action (§ 1.303) is two months from…
Read MoreWhat are the steps for filing an appeal to the Federal Circuit in an inter partes reexamination?
According to MPEP 2683, the steps for filing an appeal to the Federal Circuit in an inter partes reexamination are: In the USPTO, timely file a written notice of appeal directed to the Director in accordance with 37 CFR 1.302 and 1.304. In the Federal Circuit, file a copy of the notice of appeal and…
Read MoreWhat is the time limit for filing a rebuttal brief in an inter partes reexamination?
According to MPEP 2678, the time limit for filing a rebuttal brief in an inter partes reexamination is one month from the mailing date of the examiner’s answer. This is specified in 37 CFR 41.66(d), which states: “Any appellant may file a rebuttal brief under § 41.71 within one month of the date of the…
Read MoreWho is responsible for determining compliance of rebuttal briefs in inter partes reexamination?
The responsibility for determining compliance of rebuttal briefs in inter partes reexamination lies with the Board of Patent Appeals and Interferences (BPAI). As stated in MPEP 2679: “As provided in MPEP § 2674, the sole responsibility for determining whether rebuttal briefs comply with 37 CFR 1.943(c) and 37 CFR 41.71 was delegated to the Board…
Read MoreWhat are the options for a patent owner to appeal a decision of the Board in a reexamination proceeding?
A patent owner who is not satisfied with the decision of the Board in a reexamination proceeding has limited options for appeal. According to MPEP 2279, “The patent owner may appeal the decision of the Board only to the United States Court of Appeals for the Federal Circuit pursuant to 35 U.S.C. 141.” This applies…
Read MoreCan a claim be revived after an interference judgment?
Generally, a claim that has been subject to an adverse interference judgment cannot be revived in its current form. The MPEP 2308.01 is clear on this point: “Judgment against a claim in an interference, including any judgment on priority or patentability, finally disposes of the claim.” This finality means that the claim, as judged in…
Read MoreWhat happens if an appellant brief does not comply with all requirements?
If an appellant brief does not comply with all requirements set forth in 37 CFR 41.67(a) and (c), the following process occurs: The appellant will be notified of the defect(s). The appellant will be given a non-extendable period of one month to file an amended brief to correct the defect(s). As stated in the MPEP:…
Read MoreWhat happens after the examiner acknowledges a rebuttal brief?
After the examiner acknowledges a rebuttal brief, the following occurs: No further response from the examiner is typically required. Any additional replies or comments from any party will not be considered. The inter partes reexamination proceeding is forwarded to the Board for a decision on the appeal. The MPEP provides two examples of acknowledgments by…
Read MoreWhat are the consequences of not filing a respondent brief in inter partes reexamination?
The MPEP 2675.01 outlines the consequences of not filing a respondent brief in inter partes reexamination: “If no respondent brief is filed, the reexamination will proceed to the Board for decision based upon the appellant’s brief and the examiner’s answer.” This means that: The absence of a respondent brief does not halt the reexamination process…
Read MoreWhat are the time limits for filing an appellant brief in an inter partes reexamination?
The time limits for filing an appellant brief in an inter partes reexamination are specified in 37 CFR 41.66. The brief must be filed by the later of: Two months from the date of the examiner’s answer The time remaining in the maximum six-month time period set in MPEP § 2662 to file an appeal…
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