What are the consequences of reopening prosecution after appeal in a patent application?
Reopening prosecution after appeal in a patent application can have several consequences: Withdrawal of the appeal: The appeal is automatically withdrawn when prosecution is reopened. New Office action: The examiner must issue a new Office action addressing all claims on appeal. Additional prosecution: The applicant may need to respond to new rejections or arguments, potentially…
Read MoreWhat happens when the Board makes a new rejection under 37 CFR 41.50(b)?
When the Board makes a new rejection under 37 CFR 41.50(b), the appellant has two options: Elect to proceed before the examiner: The Board’s affirmance is treated as non-final. Appellant must amend the newly rejected claims or submit new evidence, or both. Prosecution reopens before the examiner. Request rehearing of the new rejection: Must be…
Read MoreWhat options does an appellant have after prosecution is reopened?
When prosecution is reopened after an appeal brief has been filed, the appellant has several options to avoid abandonment of the application. According to MPEP 1207.04, the options are: (A) file a reply under 37 CFR 1.111, if the Office action is non-final; (B) file a reply under 37 CFR 1.113, if the Office action…
Read MoreWhat are the fee requirements if an applicant elects to reopen prosecution after a Board decision?
If an applicant elects to reopen prosecution after a Board decision, they would have to pay the appeal fees if a new appeal is subsequently filed. The MPEP states: “Moreover, if applicant elects to reopen prosecution under 37 CFR 41.50(a)(2)(ii) or 41.50(b)(1) after a decision by the Board, then applicant would have to pay the…
Read MoreHow should examiners handle newly discovered references after allowance?
How should examiners handle newly discovered references after allowance? Examiners have specific procedures for handling newly discovered references after a patent application has been allowed. According to MPEP 707.05: ‘Where patents, publications, and other such items of information are submitted by a party (whether the applicant or an independent third party) after the mailing date…
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