When can amendments be filed after an appeal has been filed?
Amendments can be filed at different stages after an appeal has been filed, but their admissibility depends on the timing and nature of the amendment: Amendments filed after the notice of appeal but before the appeal brief may be admitted as provided in 37 CFR 1.116. Amendments filed on or after the date of filing…
Read MoreWhat is the “overlooked aspects” exception in patent reissue recapture?
What is the “overlooked aspects” exception in patent reissue recapture? The “overlooked aspects” exception is a rare circumstance where recapture may be allowed in a reissue application. This exception applies when the reissue claims are drawn to a separate invention or separate aspect/embodiment that was not covered by a claim at any point during prosecution…
Read MoreWhat are the options available to an appellant after the Board designates a new ground of rejection?
When the Board designates a new ground of rejection under 37 CFR 41.50(b), the appellant has three options for each claim so rejected: Reopen prosecution before the examiner by submitting an appropriate amendment and/or new evidence (37 CFR 41.50(b)(1)) Request rehearing before the Board (37 CFR 41.50(b)(2)) File a request for continued examination (RCE) The…
Read MoreWhat options are available if an appeal is dismissed but the application is not abandoned?
If an appeal is dismissed but the application is not abandoned (due to at least one allowed claim), the applicant has several options. According to MPEP 1205.01: “If the appeal is dismissed, but the application is not abandoned because there is at least one allowed claim, the applicant may file a petition to reinstate the…
Read MoreWhat happens if a Notice of Appeal is filed after the filing of an RCE?
If a Notice of Appeal is filed after the filing of an RCE but before a first Office action is issued, the Notice of Appeal is defective. According to MPEP 1204.01, “If appellant files an RCE under 37 CFR 1.114 , thereby entering the RCE and prosecution, and then subsequently files a notice of appeal…
Read MoreWhat is the difference between a non-responsive amendment and a non-compliant amendment?
It’s important to distinguish between a non-responsive amendment and a non-compliant amendment in patent prosecution: Non-responsive amendment: This occurs when the amendment fails to address the substance of the previous Office action, such as by canceling all elected claims and presenting only non-elected claims. It is a matter of substance. Non-compliant amendment: This refers to…
Read MoreCan a patent examiner issue a new restriction requirement after an applicant has already complied with a previous one?
Yes, a patent examiner can issue a new restriction requirement even after an applicant has complied with a previous one. This is supported by MPEP 811.02, which states: “Since 37 CFR 1.142(a) provides that restriction is proper at any stage of prosecution up to final action, a second requirement may be made when it becomes…
Read MoreHow does MPEP 811.03 affect patent examination strategy?
MPEP 811.03 significantly impacts patent examination strategy by allowing for the possibility of a restriction requirement to be reintroduced. The section states: “Where a requirement to restrict is made and thereafter withdrawn as improper, if restriction becomes proper at a later stage in the prosecution, restriction may again be required.” This provision means that: Applicants…
Read MoreHow are minor drawing corrections handled during patent prosecution?
Minor drawing corrections during patent prosecution are typically handled as follows: The examiner may not object to or require correction of minor drawing informalities. These minor issues can be pointed out to the applicant in an Office action or interview. The applicant can choose to correct these minor issues before allowance. As stated in MPEP…
Read MoreHow does the “materially narrowed” test apply in patent reissue recapture analysis?
How does the “materially narrowed” test apply in patent reissue recapture analysis? The “materially narrowed” test is a crucial part of the third step in the recapture analysis for patent reissue applications. It determines whether the reissue claims have avoided recapture by including a materially narrowing limitation relative to the original claims. According to MPEP…
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