What is a Request for Continued Examination (RCE) in the context of reissue applications?
A Request for Continued Examination (RCE) is a procedure available for reissue applications of utility or plant patents filed on or after June 8, 1995. According to MPEP 1452: “A request for continued examination (RCE) under 37 CFR 1.114 is available for a reissue application for reissue of a utility or plant patent filed on…
Read MoreDoes filing an RCE result in a new reissue application?
No, filing a Request for Continued Examination (RCE) does not result in a new reissue application. The MPEP 1452 clearly states: “An RCE continues the prosecution of the existing reissue application and is not a filing of a new reissue application.” This means that the RCE simply allows for continued examination of the current reissue…
Read MoreWhat is the effect of an RCE on a pending appeal?
Filing a Request for Continued Examination (RCE) has a significant effect on a pending appeal. According to MPEP 1204.01: “The filing of an RCE under 37 CFR 1.114 , including an RCE filed with a submission and fee under 37 CFR 1.17(e) , will be treated as a withdrawal of the appeal.” This means that…
Read MoreWhat is the purpose of conducting a thorough search during patent examination?
The purpose of conducting a thorough search during patent examination is to enable a speedy and just determination of the issues involved. According to MPEP 904.03, It is a prerequisite to a speedy and just determination of the issues involved in the examination of an application that a thorough and complete search, commensurate with the…
Read MoreWhat constitutes a prohibited “sounding out” interview according to the MPEP?
According to MPEP 713.03, a prohibited “sounding out” interview is characterized by the following: The sole purpose is to gauge the examiner’s position or opinion Any agreement reached would be conditional upon approval by a principal attorney Often involves a local attorney acting on behalf of an out-of-town attorney The MPEP states: “Interviews that are…
Read MoreCan an examiner avoid an appeal conference?
Yes, an examiner can avoid an appeal conference under certain circumstances. The MPEP 1207.01 states: “However, if the examiner charged with the responsibility of preparing the examiner’s answer reaches a conclusion that the appeal should not go forward and the supervisory patent examiner (SPE) approves, then no appeal conference is necessary.” In such cases, the…
Read MoreHow does abandonment of a patent application affect priority claims?
Abandonment of a patent application can significantly affect priority claims, particularly for continuing applications. The MPEP 711.02 notes: “Where the application is abandoned after the close of prosecution as defined in MPEP § 711.03(c), the failure to take any necessary action prior to the expiration of the period for reply in the last Office action…
Read MoreWhat is meant by “Withdrawal or Dismissal of Appeal” in patent prosecution?
“Withdrawal or Dismissal of Appeal” in patent prosecution refers to the termination of an appeal process before the Patent Trial and Appeal Board (PTAB) either by the applicant’s voluntary withdrawal or by the Board’s dismissal. This process is outlined in MPEP 1215. Withdrawal typically occurs when an applicant decides to end the appeal process voluntarily,…
Read MoreWhat happens if I withdraw my appeal after the reply period has expired?
If you withdraw your appeal after the period for reply to the final rejection has expired, the application will be considered abandoned as of the date the appeal was withdrawn, unless there are allowed claims in the case. The MPEP states: “Where, after an appeal has been filed and before decision by the Board, an…
Read MoreCan appeal fees be refunded if a patent appeal is withdrawn or dismissed?
The refund of appeal fees in cases of withdrawal or dismissal depends on the specific circumstances and timing. Generally: If an appeal is withdrawn prior to the filing of an appeal brief, a portion of the appeal fee may be refunded. Once an appeal brief has been filed, typically no refund is available. In cases…
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