5 Written questions
5 Matching questions
- What happens after an oral hearing is requested?
- What is required to be in appeal brief?
- 1216: The People's Court: Going to Court: When can it happen?
- What do petition matters concern and who deals with them?
- Timing of Filing a Request for Oral Hearing
- a 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
- b Optional; must be filed within 2 months of examiner's answer
Good cause extension of time
- c Petition matters dealing with objections to formal/procedural matters made to the Commissioner
- d 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!
- e Remember: This can only happen after the Board has issued a rejection, if the Board remands back to the examiner there is no issue that the courts have subject matter jurisdiction over.
TIME: 2 months after the Board's final decision (in case there are re-hearing requests that are in play it is from the final time at which the Board is no longer hearing anything new about the appeal). Extensions are only for good cause.
5 Multiple choice questions
- Like any other response, the appeal must be responsive to every ground of rejection made on the merits. If the applicant does not argue against a ground for rejection, it is summarily sustained.
Components of the brief:
1. Real party of interest (the inventor/applicant/assignee)
2. Related appeals & interferences (background info on other proceedings)
3. Status of Claims (which ones are allowed/rejected)
4. Status of Amendments
5. Summary of claimed subject matter
6. Grounds of rejection to be reviewed on appeal (what the examiner said the grounds of rejection were)
7. Argument (why the claims should not be rejected)
8. Claims appendix
9. Evidence appendix (this is where additional affidavits and other evidence are put)
10. Related proceedings appendix.
- 1) Statutory Disclaimers
2) Terminal Disclaimers:
- Say there is a final office action (3 month SSP), and the applicant files notice to appeal within 1 month of the office action. If the applicant fails to submit his actual appeal brief within 2 months of the notice, but still gets it in before the original SSP. Then the applicant still has to file a petition for a time extension. (Same thing can happen with an RCE, if the RCE is filed > 2 months after the office action, but before the 3 month SSP, a petition for a 1 month extension is needed).
- MPEP 1206
- When there is no appeal brief filed within the 37 CFR 41.37 time frame (2 months from filing of notice of appeal) the appeal gets dismissed.
Remember: If some claims are still allowable, the patent can still issue with the allowable claims, but all others get canceled.
5 True/False questions
1211.03: Remand for new affidavits or declarations: → These are only considered when the appellant makes the showing under 37 CFR 1.116(c) as to why the affidavits are necessary, and as to why they were not presented earlier.
What statute deals with appeal procedure? → Appeal procedure within the Office and to the courts has long been provided by stature (35 USC 134)
How many oral hearing may an applicant request in front of the board → One
Who can appeal and when? → Patentee can appeal whose claim has been twice or finally (ex parte) rejected in a reexamination filed before Nov. 29, 1999; only finally rejected after said date.
1215: Withdrawing or Dismissing an Appeal: → The board can reverse the examiner's rejection, affirm it in whole or in part, or remand. Remember, that for a later court case, that a decision to remand cannot be brought up for judicial review (only an affirmation of the rejection).
1213.01: The Board may simply state how the applicant could amend an appealed claim such that it would be allowed. The applicant may then properly amend the claim within the time period for seeking court review (that is a 2 month window starting from the date of the board's final decision).
1213.02: New Grounds for Rejection: the Board can make a rejection on new grounds for any claim it wants to. (even if the claim was not previously rejected). Remember, this is different than the examiner who can only reject a claim on new grounds if he had already rejected the same claim for different reasons (an examiner it not allowed to find a new ground to reject a claim he previously put into allowance).