What are the rules for extending time to file an appeal brief or reply brief in reexamination?
The rules for extending time to file an appeal brief or reply brief in ex parte reexamination are as follows: Extensions are governed by 37 CFR 1.550(c). For patent owner requested or Director ordered reexaminations, a “no cause” extension of up to two months from the time permitted to file the brief can be requested.…
Read MoreWhat happens after a reply brief is filed in response to an Examiner’s Answer?
After a reply brief is filed in response to an Examiner’s Answer, the jurisdiction over the appeal passes to the Board. According to MPEP § 2275: “After receipt of a reply brief in compliance with 37 CFR 41.41 or the expiration of the time in which to file such a reply brief (37 CFR 41.35),…
Read MoreWhat is the procedure if an appellant believes a new argument is raised in the examiner’s answer?
If an appellant believes a new argument is raised in the examiner’s answer, they have two main options: File a petition under 37 CFR 1.181 to designate the new argument as a new ground of rejection. Address the new argument directly in the reply brief without filing a petition. The MPEP clarifies: “If appellant wishes…
Read MoreWhen is a reply brief required in a patent appeal?
While a reply brief is normally optional, there are specific circumstances where it becomes mandatory. According to MPEP 1208: “In response to the following, however, appellant is required to file either a reply brief to maintain the appeal or a reply under 37 CFR 1.111 to reopen prosecution: If appellant requests that the appeal be…
Read MoreWhat is the time limit for filing a reply brief in a patent appeal?
According to MPEP 1208, an appellant may file a single reply brief “within the later of two months from the date of either the examiner’s answer, or a decision refusing to grant a petition under 37 CFR 1.181 to designate a new ground of rejection in an examiner’s answer.” The MPEP states: “Under 37 CFR…
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 are the options if a petition to designate a new ground of rejection is not granted?
If a petition to designate a new ground of rejection is not granted, the following options are available: The appeal is maintained. The appellant is given a two-month time period to file a single reply brief under 37 CFR 41.41. Jurisdiction passes to the Patent Trial and Appeal Board (PTAB) upon filing of the reply…
Read MoreCan new evidence be submitted in a reply brief during a patent appeal?
No, new evidence is not permitted in a reply brief during a patent appeal. The MPEP 1208 clearly states: “New or non-admitted affidavits, and/or other evidence are not permitted in a reply brief.” Any new amendments must be submitted separately from the reply brief, and their entry is subject to the provisions of 37 CFR…
Read MoreWhen does jurisdiction over a patent application transfer from the Patent Examining Corps to the Board?
The transfer of jurisdiction from the Patent Examining Corps to the Board occurs at a specific point in the appeal process. According to MPEP 1203, “Jurisdiction over the proceeding passes to the Board upon the filing of a reply brief under 37 CFR 41.41 or the expiration of the time in which to file such…
Read MoreWhen does an application leave the jurisdiction of the examiner during the appeal process?
During the appeal process, there comes a point when the application is no longer under the jurisdiction of the examiner. This transition is defined in the MPEP as follows: “After the time specified in 37 CFR 41.35(a), the application or ex parte reexamination is no longer under the jurisdiction of the examiner.” The time specified…
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