What is the scope of the PTAB’s jurisdiction in a derivation proceeding?
The Patent Trial and Appeal Board (PTAB) exercises broad and exclusive jurisdiction over patent applications involved in derivation proceedings. According to MPEP 2313, which cites 37 CFR 42.3: “The Board may exercise exclusive jurisdiction within the Office over every involved application and patent during the proceeding, as the Board may order.” This means that the…
Read MoreWhen does the PTAB’s jurisdiction over a patent application in a derivation proceeding end?
The Patent Trial and Appeal Board (PTAB) retains jurisdiction over a patent application involved in a derivation proceeding until the proceeding is formally terminated. As stated in MPEP 2313: “The Board retains jurisdiction over the derivation proceeding until it is terminated.” This means that the PTAB maintains exclusive control over the application throughout the entire…
Read MoreWhat happens to a patent application once a derivation proceeding is instituted?
Once a derivation proceeding is instituted, the Patent Trial and Appeal Board (PTAB) acquires exclusive jurisdiction over the involved patent application. As stated in MPEP 2313: “The Board acquires jurisdiction over any involved file when the Board initiates a derivation proceeding. Other proceedings for the involved file within the Office are suspended except as the…
Read MoreCan an examiner continue to examine a patent application involved in a derivation proceeding?
No, once a patent application becomes involved in a derivation proceeding, the examiner cannot continue regular examination. According to MPEP 2313: “The examiner may not act on an involved patent or application except as the Board may authorize.” This means that all examination activities are suspended unless the Patent Trial and Appeal Board (PTAB) specifically…
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