What happens if new evidence is filed after the appeal brief in a patent application?
If new evidence is filed after the appeal brief in a patent application, the examiner must determine whether the evidence overcomes all rejections. According to MPEP 1206: “If the examiner determines that the evidence overcomes all rejections, the examiner should issue a new Office action withdrawing all previous rejections and either allowing the application or…
Read MoreCan I present new arguments or evidence during an oral hearing for a patent appeal?
Generally, you are limited to presenting arguments and evidence that have already been submitted in your brief or reply brief during an oral hearing. The MPEP states: “At the oral hearing, appellant may only rely on Evidence that has been previously entered and considered by the primary examiner and present argument that has been relied…
Read MoreCan an appellant request multiple rehearings?
Generally, an appellant is limited to a single request for rehearing. However, there is a specific exception to this rule. According to MPEP 1214.03: “No request for rehearing from a decision on rehearing will be permitted, unless the rehearing decision so modified the original decision as to become, in effect, a new decision, and the…
Read MoreWhat happens if a Pre-Appeal Brief Request is not proper?
What happens if a Pre-Appeal Brief Request is not proper? If a Pre-Appeal Brief Request is not proper, the Office will notify the applicant. According to the MPEP, If a request is not proper, the Office will notify the applicant of the deficiency by issuing a notice. (MPEP 1204.02) Specifically: The applicant will be given…
Read MoreWhat happens to Information Disclosure Statements (IDS) submitted after a notice of appeal?
Information Disclosure Statements (IDS) submitted after a notice of appeal are handled differently from other types of submissions. According to MPEP 1206: “Information Disclosure Statements submitted after the date of a notice of appeal are normally held in abeyance pending a decision on the appeal. Consideration of Information Disclosure Statements is based on MPEP §…
Read MoreHow do I request an oral hearing for a patent appeal?
To request an oral hearing for a patent appeal, you must: File a separate paper captioned “REQUEST FOR ORAL HEARING” Submit the request within two months from the date of the examiner’s answer or the date of filing a reply brief, whichever is earlier Include the appropriate fee as set forth in 37 CFR 41.20(b)(3)…
Read MoreAre extensions of time available for responding to a new ground of rejection by the PTAB?
Extensions of time for responding to a new ground of rejection by the Patent Trial and Appeal Board (PTAB) are not automatically available. According to MPEP 1213.02: “Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time periods set forth in this section. See § 1.136(b) of…
Read MoreCan the time period for filing a rehearing request be extended?
The time period for filing a rehearing request is generally limited, but there are specific circumstances under which it can be extended. According to MPEP 1214.03: “The 2-month period provided by 37 CFR 41.52(a) for filing a request for rehearing can only be extended under the provisions of 37 CFR 1.136(b) or under 37 CFR…
Read MoreCan the time for filing an appeal brief be extended?
Yes, the time for filing an appeal brief can be extended. According to MPEP 1205.01: “This 2-month time period for a patent application may be extended under 37 CFR 1.136(a), and if 37 CFR 1.136(a) is not available, under 37 CFR 1.136(b) for extraordinary circumstances.” For patent applications, extensions can be requested under 37 CFR…
Read MoreAre there any exceptions to the rule against new arguments in a rehearing request?
Yes, there are specific exceptions to the general rule against new arguments in a rehearing request. According to MPEP 1214.03, the following exceptions are permitted: New arguments based on a recent relevant decision of either the Board or a Federal Court New arguments responding to a new ground of rejection designated pursuant to 37 CFR…
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