5 Written questions
5 Matching questions
- 1215.03: Partial Withdrawal:
- Timing of Filing a Request for Oral Hearing
- When should the request for an oral hearing be made?
- Disclaimers: Remember, there are 2 kinds:
- 1210: Actions that can happen after the examiner makes his answer, but before the Board actually makes a decision: (37 CFR 41.35)
The application & appeal will bounce from the TC (where normal examination happens) to the Board (for appeal) at one of these two times:
- a TIME: the request is 2 months from the examiner's initial or supplemental answer (just like other time limits in an appeal), however it can only be extended for good cause (37 CFR 1.136(b)) not automatically.
- b Optional; must be filed within 2 months of examiner's answer
Good cause extension of time
- c What you'd expect, claims that are withdrawn and not acted upon are canceled (2 month time window from the board's decision, or 2 months from an examiner's answer with no reply brief given).
- d 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.
- e 1) Statutory Disclaimers
2) Terminal Disclaimers:
5 Multiple choice questions
- Remember, appeals are only for decisions by the USPTO on the actual merits of the patent, other decisions are protested via petition instead. Remember, any petition not filed within 2 months of the underlying action may be dismissed by the USPTO under 37 CFR 1.181(f).
- MPEP section 1208 recites 11 content requirements
- 1) File notice of appeal within 2 months of final (second) rejection on merits
2) EOT available for up to 3 more months
- 1215.01: Withdrawing an appeal: As long as the withdrawal will not actually cause the app to be abandoned, an atty who is not of record (or the atty of record or the applicant) can withdraw an appeal under 37 CFR 1.34.
Another way to withdraw from appeal is to file an RCE (37 CFR 1.114) along with the 37 CFR 1.117(e) fee and re-open the app for prosecution under the RCE.
Remember: If the board has a rejection on new grounds in its ruling, or if the examiner files a supplemental answer (after the initial answer) that includes new grounds of rejection, then the applicant has the right to re-open prosecution on the new rejection by filing the standard 37 CFR 1.111 response along with affidavits/evidence under 37 CFR 1.130/1.131/1.132.
- The examiner's answer should come within 2 months of the receipt of the brief by the examiner and should contain:
responses to arguments in the brief and point out errors in the brief.
If the appeal is persuasive the examiner should also expressly withdraw his rejection on grounds where the appeal was persuasive.
5 True/False questions
What happens after an oral hearing is requested? → Once the hearing is requested, the USPTO will contact the applicant with the particulars of time/location of the hearing, if the applicant does not confirm this notice, the hearing is waived!
How many oral hearing may an applicant request in front of the board → One
Amendments after the notice of appeal, but before the appeal brief is submitted may contain: → 1. cancel claims (remaining claims could be allowed)
2. rewrite dependent claims into independent form (if a broader independent claim is shot down, the dependent claim with all of the limitations of its parent + extra limitations might still be allowable and needs to become an independent claim if the parent is no more).
Who can appeal and when? → 1) File notice of appeal within 2 months of final (second) rejection on merits
2) EOT available for up to 3 more months
1214.06: What happens when the Examiner is sustained in whole or in part: → 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.