What are the options if a petition to designate a new ground of rejection is not granted?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-27 10 Rules 5 Related FAQs 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. 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 brief or expiration of the two-month period, whichever is earlier. The MPEP states: “ A decision refusing to grant a petition will provide a two-month time period in which appellant may file only a single reply brief under 37 CFR 41.40 .” It’s important to note that if a reply brief is filed within two months of the examiner’s answer but before a decision on the petition, it will be treated as a request to withdraw the petition and maintain the appeal. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Request to Withdraw Appeal Treated as Reopening MPEP 1207.05 Requirement for New Ground of Rejection in Answer MPEP 1207.03(b) Prohibited Designate New Ground of Rejection Clearly MPEP 1207.01 Required New Ground of Rejection Based on Amendment or Information Disclosure Statement MPEP 1207.04 Permitted No Decision on Petition MPEP 1207.03(b) Reply Brief Before Decision Withdraws Petition and Maintains Appeal MPEP 1207.03(b) Evidence Must Relate to New Ground of Rejection MPEP 1207 Required TC Director Approval for New Ground of Rejection MPEP 1207.01 Maintain Appeal Through Reply Brief MPEP 1207 Request to Reopen Prosecution Treats as Appeal Withdrawal MPEP 1207 Other Related FAQs 5 FAQs Collapse What is a new ground of rejection in patent examination? What constitutes a new ground of rejection in patent examination? What are examples of actions that do n...