Can new grounds of rejection be proposed in a respondent brief?
No, new grounds of rejection cannot be proposed in a respondent brief during an inter partes reexamination appeal. The MPEP explicitly states in reference to 37 CFR 41.68(b)(1)(vi): “No new ground of rejection can be proposed by a requester respondent.” This limitation ensures that the scope of the appeal remains focused on the issues raised…
Read MoreCan new evidence be included in a respondent brief?
No, new evidence cannot be included in a respondent brief during an inter partes reexamination appeal. The MPEP clearly states in reference to 37 CFR 41.68(b)(2): “A respondent brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence.” This restriction ensures that the appeal process focuses on…
Read MoreWhat forms are used for advisory actions in ex parte reexamination?
The USPTO uses specific forms for advisory actions in ex parte reexamination, depending on the stage of the proceedings. According to MPEP 2296, there are two main forms: PTOL-467: Ex Parte Reexamination Advisory Action Before the Filing of an Appeal Brief PTOL-467A: Ex Parte Reexamination Advisory Action After the Filing of an Appeal Brief These…
Read MoreWhat happens if a respondent brief does not comply with the requirements?
If a respondent brief fails to meet the requirements set forth in 37 CFR 41.68(a) and (b), the following process occurs: The respondent will be notified of the non-compliance reasons. The respondent will be given a non-extendable time period to file an amended brief. If the respondent fails to file an amended brief within the…
Read MoreHow can a patent owner challenge the decision to grant an ex parte reexamination?
A patent owner has several options to challenge the decision to grant an ex parte reexamination based on a substantial new question of patentability (SNQ): Request reconsideration in the patent owner’s statement under 37 CFR 1.530. Present arguments in the response to the Office action under 37 CFR 1.111(b). Appeal to the Patent Trial and…
Read MoreHow is a decision by the Board of Patent Appeals and Interferences (BPAI) processed in reexamination?
How is a decision by the Board of Patent Appeals and Interferences (BPAI) processed in reexamination? When the Board of Patent Appeals and Interferences (BPAI) issues a decision in a reexamination proceeding, the following steps are taken: The decision is scanned into the Image File Wrapper (IFW). The decision is forwarded to the Central Reexamination…
Read MoreWhat is an Appeal Brief in patent examination?
An Appeal Brief is a critical document in the patent appeal process. It is submitted by the applicant to the Patent Trial and Appeal Board (PTAB) when challenging a patent examiner’s decision to reject one or more claims in a patent application. The Appeal Brief outlines the applicant’s arguments for why the examiner’s rejection should…
Read MoreWhat actions can the USPTO Director take following a Federal Circuit decision?
Following a decision by the U.S. Court of Appeals for the Federal Circuit, the USPTO Director has several options for action, depending on the nature of the decision and its implications for the case. These actions may include: Implementing the court’s decision directly Requesting a rehearing or en banc review Petitioning for certiorari to the…
Read MoreWhat happens to claims that are not appealed in a patent application?
Claims that are not appealed in a patent application may be cancelled. According to MPEP 1214.05, “Where, in an appeal brief filed before January 23, 2012, an appellant withdraws some of the appealed claims (i.e., claims subject to a ground of rejection that the appellant did not present for review in the brief), and the…
Read MoreHow are “special” applications handled during the appeal process?
Applications that have been designated as “special” receive expedited treatment throughout the entire prosecution process, including appeals. MPEP 1203 states, “If the applicant remains diligent, an application for patent that once has been made special and advanced out of turn by the United States Patent and Trademark Office (Office) for examination will continue to be…
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