What happens to allowed claims when an appeal is withdrawn?
When an appeal is withdrawn in an application that contains both allowed claims and claims on appeal, the allowed claims are not affected. The MPEP states: “If an application contains allowed claims, as well as claims on appeal, the withdrawal of the appeal does not operate as an abandonment of the application, but is considered…
Read MoreWhat happens after a reply brief is filed in a patent appeal?
Once a reply brief is filed, the jurisdiction of the appeal passes to the Patent Trial and Appeal Board (PTAB). According to MPEP 1208: “After receipt of a reply brief under 37 CFR 41.41, jurisdiction over the appeal passes to the Board. Normally, the examiner does not need to acknowledge the reply brief and will…
Read MoreHow should examiners handle after-final amendments or evidence in relation to an Examiner’s Answer?
When handling after-final amendments or evidence in relation to an Examiner’s Answer, examiners should: Ensure each after-final amendment or evidence is indicated as entered or not-entered Issue an advisory action for each after-final amendment or evidence Not comment on affidavits, declarations, or exhibits that were refused entry The MPEP states: “Before preparing the answer, the…
Read MoreHow are affidavits or other evidence treated when filed after a notice of appeal?
The treatment of affidavits or other evidence filed after a notice of appeal depends on the timing of the submission: If filed after the notice of appeal but before the appeal brief, they may be admitted if: The examiner determines that they overcome all rejections under appeal, and A showing of good and sufficient reasons…
Read MoreWhat are examples of actions that do not constitute a new ground of rejection in an Examiner’s Answer?
According to MPEP 1207.03, the following actions do not constitute a new ground of rejection in an Examiner’s Answer: Pointing out where an appellant’s arguments are not persuasive Responding to new arguments raised in the appeal brief Relying on a different portion of a reference to elaborate upon that which has been cited previously Changing…
Read MoreHow are appeals handled when a Patentability Report is involved?
When an appeal is taken from the rejection of claims involving a Patentability Report, MPEP 705.01(a) states: ‘When an appeal is taken from the rejection of claims, all of which are examinable in the TC preparing a Patentability Report, the application should be transferred to said TC for the purpose of appeal.’ This means: The…
Read MoreHow are appeals handled in cases involving Patentability Reports?
When an appeal is taken from the rejection of claims in a case involving a Patentability Report, specific procedures are followed. According to MPEP 705.01(a): “When an appeal is taken from the rejection of claims, all of which are examinable in the TC preparing a Patentability Report, the application should be transferred to said TC…
Read MoreHow does the reply period differ for patent applications under appeal or court review?
The reply period for patent applications under appeal or court review may differ from the standard periods. The MPEP Section 710 states: ‘See MPEP Chapter 1200 for period for reply when appeal is taken or court review sought.’ This reference to MPEP Chapter 1200 indicates that special rules and timeframes may apply when an application…
Read MoreCan a premature final rejection be used as grounds for appeal?
No, a premature final rejection cannot be used as grounds for appeal. MPEP 706.07(c) explicitly states that the issue of prematureness “may therefore not be advanced as a ground for appeal, or made the basis of complaint before the Patent Trial and Appeal Board.” This is because the prematurity of a final rejection is considered…
Read MoreCan a patent application under secrecy order be appealed?
Can a patent application under secrecy order be appealed? Yes, patent applications under secrecy orders can be appealed, but with certain restrictions. MPEP 120 states: ‘Appeals to the Patent Trial and Appeal Board and petitions to the Director under 37 CFR 1.181 are available to the applicant in secrecy order cases, but those actions will…
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