When is jurisdiction transferred to the Board in inter partes reexamination appeals?
The jurisdiction of an inter partes reexamination proceeding is transferred to the Patent Trial and Appeal Board (PTAB) at a specific point in the appeal process. According to MPEP 2674: “The jurisdiction of the inter partes reexamination proceeding is transferred to the Board when a docketing notice is entered after the time period for filing…
Read MoreHow is the Patent Trial and Appeal Board (PTAB) defined in the MPEP?
The Manual of Patent Examining Procedure (MPEP) provides a comprehensive definition of the Board, which refers to the Patent Trial and Appeal Board (PTAB). According to MPEP 2301.02: “Board means the Patent Trial and Appeal Board and includes: (1) For a final Board action: (i) In an appeal or contested case, a panel of the…
Read MoreWhat are the possible outcomes of a Patent Trial and Appeal Board decision in an inter partes reexamination?
According to MPEP 2681, the Patent Trial and Appeal Board (PTAB) can issue several types of decisions in an inter partes reexamination: Affirm the examiner’s decision Reverse the examiner’s decision Remand the proceeding to the examiner for further consideration Issue a new ground of rejection The MPEP states: The Patent Trial and Appeal Board, in…
Read MoreIs a PTAB decision containing a new ground of rejection considered final?
No, a Patent Trial and Appeal Board (PTAB) decision that includes a new ground of rejection is not considered final. According to MPEP 2681: A decision which includes a new ground of rejection or a remand will be considered a non-final decision. Until the Board issues a final decision, the parties to the appeal to…
Read MoreCan the Patent Trial and Appeal Board correct inventor names in a derivation proceeding?
Yes, the Patent Trial and Appeal Board (PTAB) has the authority to correct inventor names during a derivation proceeding. This power is explicitly stated in MPEP 2310.01, which cites 35 U.S.C. 135(b): “In appropriate circumstances, the Patent Trial and Appeal Board may correct the naming of the inventor in any application or patent at issue.”…
Read MoreCan the PTAB recommend claim amendments to make a claim patentable in inter partes reexamination?
No, the Patent Trial and Appeal Board (PTAB) does not have the authority to recommend claim amendments to make a claim patentable in inter partes reexamination. MPEP 2681 explicitly states: Unlike the practice for applications and ex parte reexaminations, the rules do not provide for the Board in its decision to include a statement that…
Read MoreWho authorizes the entry of added or amended claims during an interference?
The Patent Trial and Appeal Board (PTAB) is responsible for authorizing the entry of added or amended claims during an interference. According to MPEP 2308.02: “The examiner may enter the added claim or amended claim into the application only if, and only to the extent, authorized by the Board, typically in the decision on the…
Read MoreWhat action does the Board take when it receives a petition for derivation?
When the Patent Trial and Appeal Board (PTAB) receives an appropriate petition for derivation, it takes a specific action as outlined in MPEP 2311: “Where an appropriate petition for derivation has been received by the Board, the Board will enter a notice into the respondent’s application or patent file, if it has issued.” This notice…
Read MoreCan a protestor appeal an examiner’s adverse decision to the Patent Trial and Appeal Board?
No, a protestor cannot appeal an examiner’s adverse decision to the Patent Trial and Appeal Board (PTAB). According to MPEP § 1906, “a protestor cannot appeal to the Patent Trial and Appeal Board from an adverse decision of the examiner.” This limitation is part of the restricted participation allowed for protestors in the patent examination…
Read MoreWhat happens to added or amended claims during an interference?
When claims are added or amended during an interference, they are not immediately entered into the application. The MPEP 2308.02 explains: “A copy of the paper adding or amending the claim will be placed in the official record of the application, but not entered. A decision on the motion is entered in the official record…
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