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…
Read MoreWhat options does an applicant have for judicial review of a Patent Trial and Appeal Board decision?
An applicant dissatisfied with a final written decision of the Patent Trial and Appeal Board (PTAB) has two options for judicial review: Appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141 File a civil action in the U.S. District Court for the Eastern District of Virginia under 35 U.S.C.…
Read MoreWhat 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…
Read MoreWhat is the significance of the “MAIL DATE” or “NOTIFICATION DATE” on FORM PTOL-90A?
The “MAIL DATE” or “NOTIFICATION DATE” on FORM PTOL-90A plays a crucial role in the patent appeal process: According to MPEP 1214: “The 63-day time period for filing an appeal or commencing a civil action under 37 CFR 90.3, or the two month period for filing a request for rehearing under 37 CFR 41.52, begins…
Read MoreWhat are the procedures for filing a motion in a PTAB trial proceeding?
Filing a motion in a Patent Trial and Appeal Board (PTAB) trial proceeding involves specific procedures and authorizations. According to MPEP 1002.02(j): “Authorizations to file a motion other than a petition requesting the institution of a trial. 37 CFR 41.121 and 42.20 – 42.25.” This means that parties must generally obtain authorization from the PTAB…
Read MoreWhat action does the examiner take after a PTAB decision affirms or affirms in part?
When the Patent Trial and Appeal Board (PTAB) affirms or affirms in part the examiner’s decision, the examiner must follow a specific procedure: According to MPEP 1214: “If the Board decision affirms or affirms in part the decision of the examiner, the examiner must await the expiration of the above time periods before taking any…
Read MoreWhat 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:…
Read MoreHow can a policy question be certified to the Chief Administrative Patent Judge?
A policy question can be certified to the Chief Administrative Patent Judge for decision according to 37 CFR 41.3(a). As mentioned in MPEP 1002.02(g), this is one of the petitions decided by Administrative Patent Judges: “1. Certification of a question of policy to the Chief Administrative Patent Judge for decision. 37 CFR 41.3(a).” This process…
Read MoreHow 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…
Read MoreWhat 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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