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…
Read MoreAre extensions of time available for responding to a new ground of rejection by the PTAB?
Extensions of time for responding to a new ground of rejection by the Patent Trial and Appeal Board (PTAB) are not automatically available. According to MPEP 1213.02: “Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time periods set forth in this section. See § 1.136(b) of…
Read MoreWhat 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…
Read MoreWhat action does the examiner take after a PTAB decision affirms or affirms in part?
When the Patent Trial and Appeal Board (PTAB) affirms or affirms in part the examiner’s decision, the examiner must follow a specific procedure: According to MPEP 1214: “If the Board decision affirms or affirms in part the decision of the examiner, the examiner must await the expiration of the above time periods before taking any…
Read MoreWhat is the current status of covered business method reviews?
The status of covered business method (CBM) reviews has changed as of September 16, 2020. According to MPEP 1400.01: “No new petitions for covered business method reviews can be filed on or after September 16, 2020. Proceedings instituted on covered business method review petitions filed before September 16, 2020 will continue after September 16, 2020…
Read MoreWhat happens if an appeal brief is filed late in a patent application?
If an appeal brief is filed late in a patent application, the following may occur: The appeal may be dismissed by the Patent Trial and Appeal Board (PTAB). The applicant may need to file a petition to revive if the application is abandoned. A petition for an extension of time may be required, subject to…
Read MoreWhat 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…
Read MoreHow 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…
Read MoreHow 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…
Read MoreWhat 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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