Can I reopen prosecution after filing an appeal?

Yes, you can reopen prosecution after filing an appeal by submitting a Request for Continued Examination (RCE). The MPEP provides guidance on this: “Prior to a decision by the Board, if an applicant wishes to withdraw an application from appeal and to reopen prosecution of the application, applicant can file a request for continued examination…

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Can an applicant prevent the examiner from reopening prosecution after an appeal brief is filed?

An applicant cannot directly prevent an examiner from reopening prosecution after an appeal brief is filed. However, there are certain limitations and potential actions an applicant can take: Limited circumstances: Examiners should only reopen prosecution in specific situations, as outlined in MPEP 1207.04. Petition option: If the applicant believes the reopening is improper, they can…

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How are after-final amendments and evidence handled when reopening prosecution?

When reopening prosecution after an appeal, examiners must generally consider any previously unaddressed after-final amendments or evidence. According to MPEP 1207.04: “Ordinarily any after final amendment or affidavit or other evidence that was not entered before must be entered and considered on the merits as part of the action reopening prosecution.” However, there are exceptions…

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What should an examiner do if they know of references that could lead to rejection after a PTAB reversal?

If an examiner has specific knowledge of references that could lead to rejection of claims after a Patent Trial and Appeal Board (PTAB) reversal, they should not immediately reject the claims. Instead, the MPEP outlines a specific procedure: “If the examiner has specific knowledge of the existence of a particular reference or references which indicate…

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What form paragraph should examiners use when reopening prosecution after an appeal brief?

Examiners should use Form Paragraph 12.239 when reopening prosecution after an appeal brief has been filed. According to MPEP 1207.04, this form paragraph is specifically designed for this purpose: “Form paragraph 12.239 may be used when reopening prosecution:” The form paragraph includes important information for the appellant, such as the reason for reopening prosecution, the…

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What considerations should examiners and supervisors take into account when deciding to reopen prosecution?

When deciding whether to reopen prosecution or add a new ground of rejection to an examiner’s answer, examiners and their supervisors should consider several factors. According to MPEP 1207.04: “In deciding whether to reopen prosecution or to add a new ground of rejection to an examiner’s answer where proper under MPEP § 1207.03 et seq.,…

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