Can appeal fees be refunded if a patent appeal is withdrawn or dismissed?
The refund of appeal fees in cases of withdrawal or dismissal depends on the specific circumstances and timing. Generally: If an appeal is withdrawn prior to the filing of an appeal brief, a portion of the appeal fee may be refunded. Once an appeal brief has been filed, typically no refund is available. In cases…
Read MoreWhat is partial withdrawal in patent appeals?
Partial withdrawal in patent appeals refers to the process where an appellant removes specific claims from consideration during an appeal. According to MPEP 1215.03, “If an appellant wishes to remove claims from consideration on appeal, the appellant must submit an amendment to cancel the claims from the application.” This process allows applicants to focus the…
Read MoreWhat options does an appellant have when faced with a new ground of rejection?
When the Patent Trial and Appeal Board (PTAB) issues a new ground of rejection, the appellant has two options according to MPEP 1213.02: Reopen prosecution: The appellant can submit an amendment to the rejected claims or new evidence, or both, and have the examiner reconsider the case. Request rehearing: The appellant can request that the…
Read MoreWhat are the options if a petition to designate a new ground of rejection is not granted?
If a petition to designate a new ground of rejection is not granted, the following options are available: The appeal is maintained. The appellant is given a two-month time period to file a single reply brief under 37 CFR 41.41. Jurisdiction passes to the Patent Trial and Appeal Board (PTAB) upon filing of the reply…
Read MoreWhat happens if an appellant doesn’t respond to a new ground of rejection in an examiner’s answer?
If an appellant fails to respond to a new ground of rejection made in an examiner’s answer, there are serious consequences. According to MPEP 1215.03: “If appellant fails to respond to a new ground of rejection made in an examiner’s answer by either filing a reply brief or a reply under 37 CFR 1.111 within…
Read MoreCan an appellant choose not to argue certain claim rejections?
Yes, an appellant can choose not to present arguments for certain claim rejections during a patent appeal. However, it’s important to note that, as stated in MPEP 1215.03, “such arguments and evidence are waived for purposes of the appeal and the Board may summarily sustain any grounds of rejections not argued.” This means that if…
Read MoreCan new grounds of rejection be introduced in an Examiner’s Answer?
Yes, new grounds of rejection can be introduced in an Examiner’s Answer, but they must follow specific procedures: New grounds of rejection must be prominently identified in the Answer. They require approval from a Technology Center Director or designee. The appellant has specific rights to respond to new grounds of rejection. The MPEP states: “Under…
Read MoreWhat is a new ground of rejection by the Patent Trial and Appeal Board?
A new ground of rejection by the Patent Trial and Appeal Board (PTAB) is a rejection of a claim that was not previously involved in the appeal. According to MPEP 1213.02, the Board may include such a rejection in its opinion if it “have knowledge of any grounds not involved in the appeal for rejecting…
Read MoreCan new evidence be submitted in a reply brief during a patent appeal?
No, new evidence is not permitted in a reply brief during a patent appeal. The MPEP 1208 clearly states: “New or non-admitted affidavits, and/or other evidence are not permitted in a reply brief.” Any new amendments must be submitted separately from the reply brief, and their entry is subject to the provisions of 37 CFR…
Read MoreCan new evidence be included in a patent appeal brief?
No, new evidence cannot be included in a patent appeal brief. MPEP 1205.02 clearly states: “37 CFR 41.37(c)(2) prohibits the inclusion in a brief of any new or non-admitted amendment, affidavit or other evidence.” If an appellant wishes to have new evidence considered, they must follow a different process: The appellant must seek review of…
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