How can a patent owner request reopening of prosecution after a new ground of rejection?
To request reopening of prosecution after a new ground of rejection, the patent owner must: File a response within one month of the Board’s decision (extensions available under 37 CFR 1.956) Submit an appropriate amendment of the newly rejected claim(s) and/or new evidence relating to the new ground(s) of rejection According to MPEP 2682, “Under…
Read MoreWhen can prosecution be reopened after a Board decision in inter partes reexamination?
Reopening prosecution after a Board decision in inter partes reexamination is a rare occurrence. According to MPEP 2682: Proceedings which have been decided by the Board will not be reopened or reconsidered by the primary examiner, unless the provisions of 37 CFR 41.77 apply, or the written consent of the Director of the USPTO is…
Read MoreWhat options does a patent owner have after the Board issues a new ground of rejection?
According to MPEP 2682, after the Board issues a new ground of rejection under 37 CFR 41.77(b), the patent owner has two options: Request rehearing based on the same record under 37 CFR 41.79(a) File a response requesting reopening of prosecution before the examiner, including an appropriate amendment of the newly rejected claim(s) and/or new…
Read MoreIs reopening prosecution necessary when a new finding of patentability is made after ACP?
No, reopening prosecution is not necessary when a new finding of patentability is made after Action Closing Prosecution (ACP). This includes situations where a ground of rejection is withdrawn or an additional claim is found patentable. MPEP 2673.01 states: “As opposed to the examiner making a new ground of rejection, if a new finding of…
Read MoreWhen is reopening prosecution mandatory after Action Closing Prosecution (ACP) in inter partes reexamination?
Reopening prosecution is mandatory when the examiner decides to modify their position after receiving a submission from the patent owner pursuant to 37 CFR 1.951(a) and (b). This is necessary to give the patent owner an opportunity to address any changes adverse to their position. According to MPEP 2673.01: “The examiner should reopen prosecution where…
Read MoreHow does reopening prosecution after ACP affect patent owner’s amendment rights?
Reopening prosecution after Action Closing Prosecution (ACP) can significantly affect a patent owner’s amendment rights. If prosecution is reopened at the ACP stage, the patent owner’s ability to amend claims is limited. MPEP 2673.01 states: “If prosecution were reopened at the ACP stage, the patent owner loses rights as to amending the claims in response…
Read MoreWhat happens if an examiner decides not to proceed with an appeal?
If an examiner decides not to proceed with an appeal, the prosecution is reopened, and a new non-final Office action is issued. MPEP 2676 clearly states: “If the examiner reaches the conclusion that the appeal should not go forward, no appeal conference is held. Prosecution is reopened, and the examiner issues a new non-final Office…
Read MoreWhat role does the supervisory patent examiner (SPE) play in reopening prosecution after appeal?
The supervisory patent examiner (SPE) plays a crucial role in the process of reopening prosecution after an appeal has been filed. Their responsibilities include: Approval of new grounds of rejection: The SPE must approve any new ground of rejection that is not necessitated by an amendment to the claims. Recording reasons: The SPE must record…
Read MoreHow does filing a reply brief with an amendment affect a patent appeal?
Filing a reply brief with an amendment can have significant implications for a patent appeal. The MPEP 1208 provides specific guidance on this situation: “If a reply brief is filed in response to a substitute examiner’s answer under 37 CFR 41.50(a) that was written in response to a remand by the Board for further consideration…
Read MoreWhat is the process for reopening prosecution after a notice of allowance?
The process for reopening prosecution after a notice of allowance involves several steps and considerations. According to MPEP 1308.01: “If a new rejection is made, prosecution must be reopened. A new Office action must be prepared that withdraws the previous indication of allowability and sets forth the new rejection.” The process typically includes: The examiner…
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