What is the process for remanding a case to the Patent Trial and Appeal Board (PTAB) after a Federal Circuit decision?

When a case is remanded to the Patent Trial and Appeal Board (PTAB) following a decision by the U.S. Court of Appeals for the Federal Circuit, the process typically involves the following steps: The Federal Circuit issues its mandate, officially returning jurisdiction to the PTAB. The PTAB then reviews the court’s decision and instructions for…

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What happens when an examiner’s rejection is completely reversed by the Patent Trial and Appeal Board?

When an examiner’s rejection is completely reversed by the Patent Trial and Appeal Board (PTAB), the case is brought up for immediate action by the examiner. However, this doesn’t always mean the application is in condition for immediate allowance. The MPEP states: “A complete reversal of the examiner’s rejection brings the case up for immediate…

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What are the consequences of failing to respond to a PTAB request for additional briefing?

Failing to respond to a Patent Trial and Appeal Board (PTAB) request for additional briefing can have serious consequences. According to MPEP 1212: “Failure to timely comply with the order may result in the sua sponte dismissal of the appeal.“ This means that if an appellant does not provide the requested additional information within the…

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How are concurrent interference or other contested case proceedings handled with a reissue application?

When a reissue application is filed for a patent involved in an interference or another contested case, special procedures are followed: The examiner must consult with the Technology Center Training Quality Assurance Specialist (TQAS) or Supervisory Patent Reexamination Specialist (SPRS) before taking any action on the reissue application. It is crucial that the reissue application…

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How can the Chief Administrative Patent Judge address issues related to substantial new questions of patentability in ex parte reexaminations?

The Chief Administrative Patent Judge has the authority to address issues related to substantial new questions of patentability in ex parte reexaminations. According to MPEP 1002.02(f): “If raised properly during ex parte reexamination and in a subsequent appeal, issues relating to an examiner’s determination that a reference raises a substantial new question of patentability. See…

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What is the role of the Chief Administrative Patent Judge in PTAB proceedings?

The Chief Administrative Patent Judge plays a crucial role in Patent Trial and Appeal Board (PTAB) proceedings. According to MPEP 1002.02(f), their responsibilities include: Designating panels to conduct hearings in the PTAB Deciding petitions for extensions of time in PTAB proceedings Making determinations of whether to allow amendments to the description of the invention in…

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