Who is responsible for reviewing a reissue application when a protest is filed and the patent is in a contested case?
When a protest is filed in a reissue application and the related patent is involved in a contested case, the review process involves collaboration between several parties. According to MPEP 1449: “In consultation with the examiner and the PTAB, a TC TQAS or SPRS will check to see that: It is particularly important that the…
Read MoreWhat happens to petitions in reexamination proceedings after jurisdiction transfers to the Patent Trial and Appeal Board?
When jurisdiction in ex parte and inter partes reexamination proceedings transfers to the Patent Trial and Appeal Board (Board), the process for filing petitions changes. The MPEP states: “Petitions in ex parte and inter partes reexamination proceedings for actions occurring after jurisdiction has transferred to the Patent Trial and Appeal Board (Board) or for petitions…
Read MoreUnder what circumstances can a patent appeal be dismissed?
A patent appeal can be dismissed under various circumstances, including: Failure to file a timely appeal brief Submission of an incomplete or non-compliant appeal brief Lack of jurisdiction by the Patent Trial and Appeal Board (PTAB) Failure to respond to a requirement or order from the PTAB Abandonment of the application The specific reasons for…
Read MoreCan the PTAB remand a case to the examiner after requesting additional briefing?
Yes, the Patent Trial and Appeal Board (PTAB) can remand a case to the examiner after requesting additional briefing from the appellant. MPEP 1212 states: “Also, after an appellant has replied to a requirement under 37 CFR 41.50(d), a remand by the Board to the examiner may be appropriate to permit the examiner to respond…
Read MoreCan the Patent Trial and Appeal Board reject claims that were previously allowed by the examiner?
Yes, the Patent Trial and Appeal Board (PTAB) has the authority to reject claims that were previously allowed by the examiner. According to MPEP 1213.02: “Under 37 CFR 41.50(b), the Board may, in its decision, make a new rejection of one or more of any of the claims pending in the case, including claims which…
Read MoreWho decides petitions related to Patent Trial and Appeal Board proceedings?
Petitions related to Patent Trial and Appeal Board (PTAB) proceedings are generally decided by the Chief Administrative Patent Judge or other PTAB officials. According to MPEP 1002.02(f): “The Chief Administrative Patent Judge is authorized to re-delegate authority to decide any of these petitions or matters to the Deputy Chief Administrative Patent Judge, to a Vice…
Read MoreHow does the Patent Trial and Appeal Board (PTAB) affect reissue application examination?
The Patent Trial and Appeal Board (PTAB) can significantly impact the examination of reissue applications: Examiners must check the status of any pending PTAB trial related to the patent being reissued The PTAB may exercise exclusive jurisdiction over applications involved in pending trials Examiners should ensure the PTAB has not suspended the reissue application before…
Read MoreHow does the PTAB handle information disclosure statements filed during an appeal?
The Patent Trial and Appeal Board (PTAB) has a specific procedure for handling information disclosure statements (IDS) filed during an appeal. According to MPEP 1212: “Consideration of information disclosure statements filed while the Board possesses jurisdiction over the appeal will be held in abeyance until the Board’s jurisdiction ends.“ This means that if an appellant…
Read MoreWhat is the role of the Patent Trial and Appeal Board in deciding patent appeals?
The Patent Trial and Appeal Board (PTAB) plays a crucial role in deciding patent appeals. According to MPEP 1213, after considering the record, including appellant’s briefs and examiner’s answers, the Board: Writes its decision Affirms the examiner in whole or in part Reverses the examiner’s decision Sometimes sets forth a new ground of rejection The…
Read MoreWhat happens after the Patent Trial and Appeal Board (PTAB) makes a decision?
After the Patent Trial and Appeal Board (PTAB) makes a decision, the following steps occur: A copy of the decision is provided to the appellant and placed in the Image File Wrapper (IFW). The application is electronically returned to the Technology Center with an updated status reflecting the Board’s decision. Jurisdiction over the application or…
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