How does the jurisdiction change after a PTAB decision?

After a Patent Trial and Appeal Board (PTAB) decision, there is a significant change in jurisdiction over the application or patent: MPEP 1214 states: “After decision by the Board, jurisdiction over an application or patent under ex parte reexamination proceeding passes to the examiner, subject to appellant’s right of appeal or other review, for such…

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What 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…

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What authority does the Chief Administrative Patent Judge have regarding petitions and matters at the Patent Trial and Appeal Board?

The Chief Administrative Patent Judge has extensive authority over various petitions and matters at the Patent Trial and Appeal Board (PTAB). According to MPEP 1002.02(f), this authority includes: Re-delegating authority to other judges Ordering the dismissal of certain interferences Designating PTAB members for various proceedings Handling requests related to superintending PTAB functions The MPEP states:…

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How can a patent owner amend claims in an inter partes review or post-grant review?

Patent owners have the opportunity to amend claims during inter partes review (IPR) or post-grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB). According to MPEP 1002.02(j): “Motions by patent owners to amend a patent in an inter partes review or post-grant review proceeding. 37 CFR 42.121(a), 42.221(a).” The process for amending…

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What are the rules for additional discovery in PTAB proceedings?

Additional discovery in Patent Trial and Appeal Board (PTAB) proceedings is limited and subject to specific rules. According to MPEP 1002.02(j): “Requests for additional discovery. 37 CFR 41.150(c) and 42.51(b)(2).” This means that the PTAB has the authority to decide on requests for additional discovery. The process typically involves: Filing a motion requesting additional discovery…

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