How does the Board handle new grounds of rejection in inter partes reexamination appeals?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

In inter partes reexamination appeals, the Board has the authority to issue new grounds of rejection. According to MPEP 2674:

“The Board may also issue new grounds of rejection under 37 CFR 41.77(b). For example, the Board might state the following:

Pursuant to 37 CFR 41.77(b), this decision contains a new ground of rejection. 37 CFR 41.77(b) provides that ‘[t]he new ground of rejection is not considered final for judicial review.’”

When the Board issues a new ground of rejection, the patent owner has two options:

• Submit an appropriate amendment of the claims rejected
• Request rehearing of the new ground of rejection

The patent owner must exercise one of these options within one month or thirty days, whichever is longer, from the date of the decision.