How does a derivation proceeding affect the examination of patent applications?
A derivation proceeding can significantly affect the examination of patent applications in several ways. As outlined in MPEP 2315, after a derivation proceeding is decided: Jurisdiction returns to the examiner. The examiner must consider any recommendations for further action. Prosecution may need to be reopened to consider recommendations or enter recommended rejections. The examiner must…
Read MoreCan a Supervisory Patent Examiner approve reopening prosecution after an appeal brief has been filed?
Yes, a Supervisory Patent Examiner has the authority to approve reopening prosecution after an appeal brief has been filed. This is specifically mentioned in the MPEP: “Approval of reopening prosecution after the filing of an appeal brief in order to incorporate any new ground of rejection, MPEP § 1207.04.” This provision allows for the introduction…
Read MoreWhat are the consequences of introducing a new ground of rejection in an Examiner’s Answer?
What are the consequences of introducing a new ground of rejection in an Examiner’s Answer? Introducing a new ground of rejection in an Examiner’s Answer can have significant procedural consequences: Reopening of prosecution: If the examiner designates a rejection as a new ground, prosecution must be reopened, allowing the applicant to submit a reply under…
Read MoreCan prosecution be reopened after an Ex parte Quayle action?
Generally, prosecution on the merits is closed after an Ex parte Quayle action is issued. The MPEP 714.14 states: Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935). However, this closure primarily relates to substantive examination. The prosecution may continue…
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