5 Written questions
5 Matching questions
- 1215.02: If at least some of the claims for the app are allowed, then
- When is one in a position to appeal?
- Statutory Disclaimers
- 1214.06: What happens when the Examiner is sustained in whole or in part:
- a In order to even have an appeal available the USPTO has to have issued a second rejection on a claim. The second rejection could either be a normal final rejection, or it could be a rejection where the claim was initially rejected in the original app, a CIP/CPA/RCE was filed to continue the app, and then the same claim was rejected in the continuation (1 time original + 1 time continuation == 2 rejections).
- b These are where the patentee expressly disclaims 1 or more claims in the patent. This is usually due to losing a lawsuit or something along those lines.
- c 1) Must be filed within the greater of: 2 months of PTO receipt of notice; or
2) time left to reply to the action being appealed
3) EOT for up to 5 months
4) Failure to file brief dismisses appeal and abandons application if no allowed claims
- d If no claims are allowed at all: After the Board's decision the 2 month limit for taking the case to court starts running. After that is over, if there has been no court action the app is abandoned.
THIS IS WHY IT IS IMPORTANT TO PUT DISPUTED DEPENDENT CLAIMS INTO INDEPENDENT FORM: If it turns out that a parent independent claim is not allowed, but that a dependent claim (that has further limitation) would be allowed except for the fact that it is a dependent claim.... the app is still abandoned anyway! (It is up to the applicant to get the claims ready for this eventuality).
When some of the claims are allowed:
There is no requirement to file any further reply, the claims that are allowed will go back to the examiner (most likely to issue, or perhaps to have the examiner request a re-hearing). If there is no reply the other claims will be canceled.
When the claims require further action: (Like in a case where a generic claim rejection is reversed so more work is needed no the claim by the examiner): It just goes back to the examiner for more work.
- e withdrawing the appeal will not abandon the app (although claims under appeal will be canceled if no further action is taken on them).
5 Multiple choice questions
- 1) After 2 months from the time of the examiner's answer/supplemental answer if the applicant does not file a reply brief to that answer; or
2) If the applicant did file a reply brief, after the examiner notifies the applicant that the reply brief has been entered & considered and that the appeal will go to the board.
- Say there are 3 disputed claims, but the appellant either does not argue for some of them on appeal or withdraws arguments for some of them. If 2 of the 3 claims are allowed by the Board (reversing the examiner) and the third claim is considered withdrawn since it is not argued, then the 2 reversed claims go into allowance, and the non-argued claim is now canceled by the appellant's acts.
- Remember, these are for shortening the life of a claim to that of a pre-existing patent. They are useful in avoiding some double-patenting rejections (like a judicial double patenting rejection).
It must expressly disclaim the terminal part of the patent's term.
IT must state that the patent on the matter will only be enforceable for the limited time period that is disclaimed.
Who has to sign a disclaimer: Either the applicant, the assignee (if assigned in full), applicant & assignee together (for partial assignment), or the atty/agent of record.
- 1) Examiner must answer within 2 months from receipt of appeal brief
2) MPEP section 1208 recites 11 content requirements
3) No new ground of rejection
4) If new grounds, examiner must reopen prosecution; like a regular office action
- This extra evidence may be admitted, but only if the examiner determines that:
1) The affidavits or other evidence that overcome all rejections under appeal.; and
2) The showing of good or sufficient reasons why the affidavit or other evidence is actually necessary and was not available earlier.
5 True/False questions
Amendments after the notice of appeal, but before the appeal brief is submitted may contain: → 1. claim cancellations
2. any corrections to comply with formal requirements (spelling, punctuation ...)
3. present the previously rejected claims in a form that is better for appeal; or
4. Actually amend the spec or claims, however there has to be a good showing and cause given for why this was necessary and also not done earlier.
1215.03: Partial Withdrawal: → What you'd expect, claims that are withdrawn and not acted upon are canceled (2 month time window from the board's decision, or 2 months from an examiner's answer with no reply brief given).
What is required to be in appeal brief? → 1) Must identify claims being appealed
2) New arguments are allowed but new evidence is not allowed
3) Must traverse all grounds of rejection
4) All claims of a group must stand or fall together, unless stated otherwise
5) If notice of defects issued by PTO, must reply to action being appealed
What do appeal matters concern and who deals with them? → Petition matters dealing with objections to formal/procedural matters made to the Commissioner
1214.04: What happens when the Examiner is Reversed in full: → Say there are 3 disputed claims, but the appellant either does not argue for some of them on appeal or withdraws arguments for some of them. If 2 of the 3 claims are allowed by the Board (reversing the examiner) and the third claim is considered withdrawn since it is not argued, then the 2 reversed claims go into allowance, and the non-argued claim is now canceled by the appellant's acts.