What is the significance of the January 23, 2012 date mentioned in MPEP 1214.05?
The date January 23, 2012, mentioned in MPEP 1214.05, is significant because it marks a change in the handling of withdrawn claims during the patent appeal process. The MPEP states: “Where, in an appeal brief filed before January 23, 2012, an appellant withdraws some of the appealed claims […] the withdrawal is treated as an…
Read MoreAre interviews allowed after an examiner’s answer is mailed?
Generally, interviews are not permitted after an examiner’s answer is mailed and before the appeal forwarding fee is paid. The MPEP states: “While appellants may desire an interview after mailing of an examiner’s answer and prior to payment of this fee, interviews during this time period are likely to confuse the record on appeal and…
Read MoreCan interviews be conducted after an application is no longer under the examiner’s jurisdiction?
Once an application is no longer under the examiner’s jurisdiction during the appeal process, interviews are generally not permitted. However, there is a provision for exceptional circumstances: “Requests for interviews on cases under the jurisdiction of the Board should be granted only with specific approval of the Technology Center Director upon a showing in writing…
Read MoreCan Board remarks about claim features be interpreted as allowance guidance?
No, remarks by the Patent Trial and Appeal Board about claim features should not be interpreted as guidance for allowance. MPEP 1213 clearly states: A remark by the Board that a certain feature does not appear in a claim is not to be taken as a statement that the claim may be allowed if the…
Read MoreHow is a civil action under 35 U.S.C. 145 or 146 initiated?
To initiate a civil action under 35 U.S.C. 145 or 146, follow these steps: File a complaint in the U.S. District Court for the Eastern District of Virginia within the specified timeframe. Serve copies of the complaint and summons on the Director of the USPTO, the U.S. Attorney for the District of Columbia, and the…
Read MoreHow should appellants inform the Board about abandoning an appeal or filing an RCE?
Appellants who decide to abandon their appeal, file a request for continued examination (RCE), or refile their application as a continuation should promptly inform the Clerk of the Board in writing. The MPEP provides guidance on this in MPEP 1210: “To avoid the rendering of decisions by the Board in applications which appellants have decided…
Read MoreWhere can I find information about canceling rejected claims after a patent appeal?
Information about canceling rejected claims after a patent appeal can be found in several sections of the Manual of Patent Examining Procedure (MPEP). As stated in MPEP § 1302.04(e): “See MPEP § 1214.06, § 1215.03, § 1215.04 and § 1216.01.” These sections provide detailed guidance on various scenarios related to claim cancellation following an appeal:…
Read MoreWhat is the process for handling examiner’s answers on appeal in patent cases?
Examiner’s answers on appeal are a critical part of the patent examination process and are listed as an exception to partial signatory authority in MPEP 1005. This means that even examiners with partial signatory authority cannot sign these documents independently. According to MPEP 1005, “Examiner’s answers on appeal (MPEP § 1207)” require the signature of…
Read MoreWhat happens if an appeal to the Federal Circuit is dismissed?
When an appeal to the Federal Circuit is dismissed, the consequences depend on the reason for dismissal. MPEP 1216.01 outlines two scenarios: Dismissal due to failure to prosecute: “After dismissal, the action taken by the examiner will be the same as set forth above under the heading ‘Office Procedure Following Decision by the U.S. Court…
Read MoreWhat happens after the Federal Circuit issues a decision on a patent appeal?
After the Federal Circuit issues a decision on a patent appeal, the following process occurs: The Clerk of the Federal Circuit forwards a certified copy of the court’s decision (the “mandate”) to the USPTO. The mandate is entered into the file of the application, reexamination, or interference that was the subject of the appeal. The…
Read More