What is the time limit for filing an appeal in ex parte reexamination?
In ex parte reexamination, the time limit for filing an appeal is set by MPEP 2273, which states: “The appeal need not be filed within the two-month period for response to the action from which the appeal was taken, as is required by 37 CFR 1.134 and 37 CFR 1.136 for an amendment to overcome…
Read MoreWhen does the Central Reexamination Unit (CRU) retain jurisdiction in inter partes reexamination?
The Central Reexamination Unit (CRU) retains jurisdiction over the inter partes reexamination proceeding until specific conditions are met. According to MPEP 2679: “jurisdiction over the inter partes reexamination proceeding (i.e., to consider briefs, conduct an appeal conference, draft an examiner’s answer, and decide the entry of amendments, evidence, and information disclosure statements filed after the…
Read MoreCan I withdraw a Pre-Appeal Brief Review Request?
The MPEP does not provide a specific provision for withdrawing a Pre-Appeal Brief Review Request. However, it does state that certain actions by the applicant will terminate the panel’s review: The panel’s review will be terminated if the applicant files any of the following responses after filing a request, but prior to a decision by…
Read MoreWhen does an examiner prepare an Examiner’s Answer?
According to MPEP 1207, an examiner prepares an Examiner’s Answer after two key events have occurred: An appeal brief has been filed by the applicant under 37 CFR 41.37 The examiner has considered the issues on appeal The MPEP states: “After an appeal brief under 37 CFR 41.37 has been filed and the examiner has…
Read MoreWhat is the time limit for responding to a new ground of rejection by the Board?
The time limit for responding to a new ground of rejection by the Board is 2 months from the date of the Board’s decision. This applies to both options of submitting an amendment/new evidence or requesting a rehearing. The MPEP explicitly states: “The amendment and/or new evidence under 37 CFR 41.50(b)(1), or the request for…
Read MoreWhat role does the supervisory patent examiner (SPE) play in reopening prosecution after appeal?
The supervisory patent examiner (SPE) plays a crucial role in the process of reopening prosecution after an appeal has been filed. Their responsibilities include: Approval of new grounds of rejection: The SPE must approve any new ground of rejection that is not necessitated by an amendment to the claims. Recording reasons: The SPE must record…
Read MoreCan an appeal be reinstated after filing an RCE?
No, an appeal cannot be reinstated after filing a Request for Continued Examination (RCE). The MPEP 1204.01 clearly states: “The filing of an RCE under 37 CFR 1.114 , including an RCE filed with a submission and fee under 37 CFR 1.17(e) , will be treated as a withdrawal of the appeal.” Once an RCE…
Read MoreHow does filing an RCE affect the status of a previously filed appeal brief?
Filing a Request for Continued Examination (RCE) renders a previously filed appeal brief ineffective. The MPEP 1204.01 states: “If an RCE is filed in an application prior to the filing of an appeal brief, the RCE is treated as a withdrawal of the appeal.” This means that: Any appeal brief filed before the RCE is…
Read MoreCan an appellant file a Request for Continued Examination (RCE) after a Board decision?
Yes, an appellant can file a Request for Continued Examination (RCE) after a Board decision, but there are specific timing considerations to keep in mind. The MPEP states: “An RCE (accompanied by the appropriate fee and a submission) may be filed after a decision by the Board, but before the filing of a Notice of…
Read MoreWhat is the difference between final and non-final actions by the Board?
The MPEP distinguishes between final and non-final actions by the Patent Trial and Appeal Board (PTAB) based on who is authorized to take such actions. According to 37 CFR 41.2, the MPEP states: “Board” means the Patent Trial and Appeal Board and includes:(A) For a final Board action:(1) In an appeal or contested case, a…
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