How does changing the statutory basis affect grounds of rejection?
Changing the statutory basis of a rejection from one section of the statute to another typically constitutes a new ground of rejection in patent appeals. According to MPEP 1207.03(a): “Factual situations that have been found to constitute a new ground of rejection include… Changing the statutory basis of rejection from one section of the statute…
Read MoreWhen does the Board of Patent Appeals and Interferences gain jurisdiction over an appeal?
The Board of Patent Appeals and Interferences (BPAI) gains jurisdiction over an appeal when: A reply brief is filed under 37 CFR 41.41, or The time to file such a reply brief expires, whichever occurs earlier. This is specified in 37 CFR 41.35(a), which states: “Jurisdiction over the proceeding passes to the Board upon the…
Read MoreWhat is the Board’s obligation regarding new or amended claims during an appeal?
The Board of Patent Appeals and Interferences (BPAI) has no obligation to consider new or amended claims submitted while it has jurisdiction of an appeal. This is clearly stated in MPEP 1211.02: “There is no obligation resting on the Board to consider new or amended claims submitted while it has jurisdiction of the appeal.” This…
Read MoreHow does the Board’s jurisdiction over a patent appeal end?
The Board’s jurisdiction over a patent appeal can end in several ways, as outlined in 37 CFR 41.35(b): When the Director or Board enters a remand order When the Board enters a final decision and judicial review is sought or the time for seeking it has expired When an express abandonment complying with 37 CFR…
Read MoreWhat actions can the Board take if a file is incomplete or non-compliant?
If the Board determines that a file is incomplete or not in compliance with the requirements, it has several options as outlined in 37 CFR 41.35(e): “If, after receipt and review of the proceeding, the Board determines that the file is not complete or is not in compliance with the requirements of this subpart, the…
Read MoreWhat is the “basic thrust of the rejection” in patent appeals?
The “basic thrust of the rejection” is a crucial concept in determining whether a new ground of rejection has been introduced in patent appeals. According to MPEP 1207.03(a): “A position or rationale that changes the “basic thrust of the rejection” will give rise to a new ground of rejection.” The basic thrust of the rejection…
Read MoreWhat is the difference between appealable and petitionable matters in patent prosecution?
In patent prosecution, there is an important distinction between appealable and petitionable matters. MPEP 1201 states: “The line of demarcation between appealable matters for the Board and petitionable matters for the Director of the U.S. Patent and Trademark Office (Director) should be carefully observed.” Generally, appealable matters relate to the merits of the patent application…
Read MoreWhat is the appeal forwarding fee and how does it affect interviews?
The appeal forwarding fee is a fee introduced by the USPTO that must be paid to forward an appeal to the Patent Trial and Appeal Board (PTAB) after the examiner’s answer has been mailed. This fee was established on March 19, 2013, as stated in the MPEP: “Effective March 19, 2013, 37 CFR 41.20(b)(4) sets…
Read MoreWhat changes did the America Invents Act (AIA) bring to the patent appeal process?
The America Invents Act (AIA) introduced significant changes to the patent appeal process. MPEP 1201 notes: “Unless otherwise noted, the discussion of the ex parte appeal practice before the Board in this chapter is primarily directed to appeals wherein the notice of appeal was filed on or after January 23, 2012, or to proceedings commenced…
Read MoreWhat types of amendments may be remanded for consideration during an appeal?
According to MPEP 1211.02, certain types of amendments may be remanded for consideration by the examiner during an appeal. Specifically: “[A] proposed amendment filed after the date of filing of a brief to either cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or to rewrite…
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