What 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…

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Can 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.”…

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Can 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…

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Can 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…

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