What happens after the Patent Trial and Appeal Board (PTAB) makes a decision?
After the Patent Trial and Appeal Board (PTAB) makes a decision, the following steps occur: A copy of the decision is provided to the appellant and placed in the Image File Wrapper (IFW). The application is electronically returned to the Technology Center with an updated status reflecting the Board’s decision. Jurisdiction over the application or…
Read MoreWhat happens when a Patent Trial and Appeal Board (PTAB) decision is rendered?
When a Patent Trial and Appeal Board (PTAB) decision is rendered, the following process occurs: The decision is returned to the examiner. The examiner takes action consistent with the Board’s decision. If a rehearing of the Board decision is not requested, the examiner proceeds based on the decision. As stated in the MPEP: “A decision…
Read MoreHow is the PTAB decision communicated to the appellant?
The Patent Trial and Appeal Board (PTAB) decision is communicated to the appellant through a formal process: As stated in MPEP 1214: “After an appeal to the Board has been decided, a copy of the decision is provided to appellant and placed in IFW.“ This process involves: Providing a copy of the decision directly to…
Read MoreWhat are the time periods for filing an appeal or requesting a rehearing after a PTAB decision?
After a Patent Trial and Appeal Board (PTAB) decision, there are specific time periods for further action: Filing an appeal or commencing a civil action: 63 days Filing a request for rehearing: 2 months According to MPEP 1214: “The 63-day time period for filing an appeal or commencing a civil action under 37 CFR 90.3,…
Read MoreWhat is the composition of the Patent Trial and Appeal Board (PTAB)?
The Patent Trial and Appeal Board (PTAB) is composed of several key members as outlined in 35 U.S.C. 6(a): The Director of the USPTO The Deputy Director The Commissioner for Patents The Commissioner for Trademarks Administrative patent judges Specifically, the MPEP states: The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks,…
Read MoreWhat are the rules for pro hac vice representation in PTAB proceedings?
The Patent Trial and Appeal Board (PTAB) allows for pro hac vice representation in interference and trial proceedings under specific conditions. According to MPEP 1002.02(j): “Requests for recognition of counsel pro hac vice in an interference or trial proceeding. 37 CFR 41.5(a) and 42.10(c).” The process for obtaining pro hac vice representation typically involves: Filing…
Read MoreWhat types of petitions are decided by the Patent Trial and Appeal Board?
The Patent Trial and Appeal Board (PTAB) decides various types of petitions related to patent examination and post-grant proceedings. These include: Requests in reply briefs and oral hearings to consider new arguments Petitions to institute trials (e.g., inter partes review, post-grant review) Motions related to interference or trial proceedings Requests for additional discovery Motions to…
Read MoreHow does the Patent Trial and Appeal Board (PTAB) affect reissue applications?
The Patent Trial and Appeal Board (PTAB) can have a significant impact on reissue applications, particularly when there are pending trials before the PTAB. The MPEP indicates: “Also, if there is a pending trial before the Patent Trial and Appeal Board (PTAB), the PTAB may suspend action in the reissue application.” This means that in…
Read MoreHow does the PTAB handle requests for oral arguments?
The Patent Trial and Appeal Board (PTAB) has specific procedures for handling requests for oral arguments in trial proceedings. According to MPEP 1002.02(j): “Requests for oral argument on an issue raised in a paper. 37 CFR 41.124(a) and 42.70.” The process for requesting and conducting oral arguments typically involves: Filing a request for oral argument,…
Read MoreCan new arguments be introduced in a reply brief or oral hearing before the PTAB?
The Patent Trial and Appeal Board (PTAB) has specific rules regarding the introduction of new arguments in reply briefs and oral hearings: For reply briefs: MPEP 1002.02(j) states, “Requests in a reply brief to consider a new argument not previously raised in an appeal brief or not responsive to an argument raised by the examiner.…
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