What happens when a Patent Trial and Appeal Board (PTAB) decision is rendered?
When a Patent Trial and Appeal Board (PTAB) decision is rendered, the following process occurs: The decision is returned to the examiner. The examiner takes action consistent with the Board’s decision. If a rehearing of the Board decision is not requested, the examiner proceeds based on the decision. As stated in the MPEP: “A decision…
Read MoreHow is the PTAB decision communicated to the appellant?
The Patent Trial and Appeal Board (PTAB) decision is communicated to the appellant through a formal process: As stated in MPEP 1214: “After an appeal to the Board has been decided, a copy of the decision is provided to appellant and placed in IFW.“ This process involves: Providing a copy of the decision directly to…
Read MoreWhat are the time periods for filing an appeal or requesting a rehearing after a PTAB decision?
After a Patent Trial and Appeal Board (PTAB) decision, there are specific time periods for further action: Filing an appeal or commencing a civil action: 63 days Filing a request for rehearing: 2 months According to MPEP 1214: “The 63-day time period for filing an appeal or commencing a civil action under 37 CFR 90.3,…
Read MoreWhat is the composition of the Patent Trial and Appeal Board (PTAB)?
The Patent Trial and Appeal Board (PTAB) is composed of several key members as outlined in 35 U.S.C. 6(a): The Director of the USPTO The Deputy Director The Commissioner for Patents The Commissioner for Trademarks Administrative patent judges Specifically, the MPEP states: The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks,…
Read MoreWhat authority does the Patent Trial and Appeal Board have to request additional briefing from appellants?
The Patent Trial and Appeal Board (PTAB) has the authority to request additional briefing from appellants under 37 CFR 41.50(d). This regulation states: “The Board may order appellant to additionally brief any matter that the Board considers to be of assistance in reaching a reasoned decision on the pending appeal.“ This authority allows the Board…
Read MoreWhat happens if a protest is filed in a reissue application related to a patent involved in a pending interference proceeding?
If a protest is filed in a reissue application related to a patent involved in a pending interference proceeding, the reissue application should be referred to the Patent Trial and Appeal Board (PTAB) before any action is taken. As stated in MPEP 1449: “If a protest (see MPEP Chapter 1900) is filed in a reissue…
Read MoreWhat are the rules for pro hac vice representation in PTAB proceedings?
The Patent Trial and Appeal Board (PTAB) allows for pro hac vice representation in interference and trial proceedings under specific conditions. According to MPEP 1002.02(j): “Requests for recognition of counsel pro hac vice in an interference or trial proceeding. 37 CFR 41.5(a) and 42.10(c).” The process for obtaining pro hac vice representation typically involves: Filing…
Read MoreWhat types of petitions are decided by the Patent Trial and Appeal Board?
The Patent Trial and Appeal Board (PTAB) decides various types of petitions related to patent examination and post-grant proceedings. These include: Requests in reply briefs and oral hearings to consider new arguments Petitions to institute trials (e.g., inter partes review, post-grant review) Motions related to interference or trial proceedings Requests for additional discovery Motions to…
Read MoreHow does the Patent Trial and Appeal Board (PTAB) affect reissue applications?
The Patent Trial and Appeal Board (PTAB) can have a significant impact on reissue applications, particularly when there are pending trials before the PTAB. The MPEP indicates: “Also, if there is a pending trial before the Patent Trial and Appeal Board (PTAB), the PTAB may suspend action in the reissue application.” This means that in…
Read MoreWhat is meant by “Withdrawal or Dismissal of Appeal” in patent prosecution?
“Withdrawal or Dismissal of Appeal” in patent prosecution refers to the termination of an appeal process before the Patent Trial and Appeal Board (PTAB) either by the applicant’s voluntary withdrawal or by the Board’s dismissal. This process is outlined in MPEP 1215. Withdrawal typically occurs when an applicant decides to end the appeal process voluntarily,…
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