Can an appellant request that a Board decision be withheld?
Yes, an appellant can request that a Board decision be withheld under certain conditions. According to MPEP 1213: An appellant may petition that the decision be withheld to permit the refiling of the application at any time prior to the mailing of the decision. Up to 30 days may be granted, although the time is…
Read MoreCan prosecution be reopened after a Federal Circuit decision?
Yes, in some situations, prosecution can be reopened after a Federal Circuit decision, but it requires special approval. According to MPEP 1216.01: “In some situations it may be necessary to reopen prosecution of an application after a court decision. Any Office action proposing to reopen prosecution after a court decision must be forwarded to the…
Read MoreWhat happens to rejected claims after an appeal in patent prosecution?
After an appeal in patent prosecution, rejected claims may be canceled depending on the outcome. The Manual of Patent Examining Procedure (MPEP) provides guidance on this process in several sections: MPEP § 1214.06 – Examiner Sustained in Whole or in Part MPEP § 1215.03 – Proceedings After Withdrawal of Appeal MPEP § 1215.04 – Dismissal…
Read MoreWhat is the purpose of remanding an amendment to the examiner during an appeal?
The purpose of remanding an amendment to the examiner during an appeal is to allow for consideration of certain limited types of changes that may not significantly alter the nature of the appeal. As outlined in MPEP 1211.02, these changes include: Canceling claims (where such cancellation doesn’t affect the scope of other pending claims) Rewriting…
Read MoreWhat is the purpose of the appeal process in patent examination?
The appeal process in patent examination serves to resolve differences of opinion between patent applicants and examiners regarding substantive decisions made by the United States Patent and Trademark Office (USPTO). As stated in MPEP 1201: “The differences of opinion on such matters can be justly resolved only by prescribing and following judicial procedures.” This process…
Read MoreWho decides petitions related to Patent Trial and Appeal Board proceedings?
Petitions related to Patent Trial and Appeal Board (PTAB) proceedings are generally decided by the Chief Administrative Patent Judge or other PTAB officials. According to MPEP 1002.02(f): “The Chief Administrative Patent Judge is authorized to re-delegate authority to decide any of these petitions or matters to the Deputy Chief Administrative Patent Judge, to a Vice…
Read MoreHow does the Board handle new grounds of rejection?
When the Patent Trial and Appeal Board issues a new ground of rejection, specific procedures must be followed. According to MPEP 1213: See MPEP § 1214.01 concerning the procedure following a new ground of rejection by the Board under 37 CFR 41.50(b). Key points about new grounds of rejection by the Board: The Board has…
Read MoreHow are cases heard by the Patent Trial and Appeal Board?
Cases before the Patent Trial and Appeal Board (PTAB) are heard by panels of at least three members, as specified in 35 U.S.C. 6(c). The MPEP states: “Each appeal, derivation proceeding, post-grant review, and inter partes review shall be heard by at least three members of the Board, who shall be designated by the Director.…
Read MoreWhat are the main duties of the Patent Trial and Appeal Board?
The Patent Trial and Appeal Board (PTAB) has several important duties as outlined in 35 U.S.C. 6(b): Review adverse decisions of examiners upon written appeal of an applicant Review appeals of reexaminations Conduct derivation proceedings Conduct inter partes reviews and post-grant reviews The MPEP specifically states: “The Patent Trial and Appeal Board shall— (1) on…
Read MoreWhat is the role of the Patent Trial and Appeal Board in deciding patent appeals?
The Patent Trial and Appeal Board (PTAB) plays a crucial role in deciding patent appeals. According to MPEP 1213, after considering the record, including appellant’s briefs and examiner’s answers, the Board: Writes its decision Affirms the examiner in whole or in part Reverses the examiner’s decision Sometimes sets forth a new ground of rejection The…
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