5 Written questions
5 Matching questions
- Terminal Disclaimers
- What do petition matters concern and who deals with them?
- 1207: The Examiner's Answer to an Appeal Brief: What are the three options an examiner has after reading the appeal brief:
- 1214.07: Reopening Prosecution: (One option after a rejection on new grounds by the Board):
- Affidavits & Other Evidence:
- a 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.
- b 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.
- c 1.REOPEN THE PROSECUTION and enter in a new ground for rejection (as long as this is approved by his supervising examiner).
2. WITHDRAW THE FINAL REJECTION and allowing the claims (when the appeal overcomes the grounds for rejection). or;
3. MAINTAIN THE APPEAL by drafting an examiner's answer that will go along with the appeal brief to the board. After 20040913 this brief may also contain new grounds for a rejection too.
- d Petition matters dealing with objections to formal/procedural matters made to the Commissioner
- e Normally once the application is in appeal, the appellant has no right to enter in amendments to the app. However: If the amendment is accompanied by a 37 CFR 1.114 RCE, then the app will go back into prosecution via the RCE along with the amendment.
5 Multiple choice questions
- 1) Can request rehearing on paper within 2 months from Boards decision
2) Good cause extension of time available
3) Court action must start within 2 months (at least 60 days) from decision
- make a request for the appellant to file a brief that gives the board the info it wants. If the appellant does not respond within the time period set by the board, the appeal may be dismissed.
- 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!
- What's the big difference? In the Circuit Court it is actually possible to introduce new evidence while the court of appeals does not allow this. However, the plaintiff will have to show good cause why this evidence was not actually given to the Board or examiner earlier in the process. (Note: new evidence that was previously withheld due to fraud or gross negligence is not allowed).
The circuit court can issue the same decisions as the appellate court above.
- 1) Must be made before jurisdiction passes to the Board
2) Allowed if amendment adopts a suggesion made, or if it removes an issue
3) Not allowed if raises new issues or increases total number of claims
4) Examiner may reopen prosecution to issue a new rejection (from the amendment or based on an IDS filed by applicant)
5 True/False questions
Appeal Conference and Examiner's Answer → 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
1211.02: Remand to consider a new amendment: → 1) The examiner's supplemental answer may have new grounds for rejection of a claim if it is in response to the board sending the app back for further consideration.
2) Whenever the examiner makes a supplemental answer (even if it does not have new grounds for rejection) the applicant must file one of these forms of response to avoid having the appeal dismissed:
1. Reopen prosecution on the claim, this is the normal 37 CFR 1.111 response to a rejection and it can also have the 37 CFR 1.130/1.131/1.132 affidavits & evidence accompanying the response.
2. Maintain the appeal: By filing a brief (37 CFR 41.41) the appeal can be kept going after the remand & supplemental response.
Timing of Filing a Reply Brief → 1) It's optional, and must be filed within 2 months of examiner's answer
2) Good cause EOT
1205.03: If a brief is non-compliant: → f the brief is non compliant, the applicant will be notified and has a 1 month (30 day) time to correct. The time is extendable under 1.136 (a)(b), and the appeal will be dismissed if the applicant fails to comply. If the applicant actually disagrees with the finding that the brief is non-conformant, he may petition under 37 CFR 1.181 or 41.3, but the due date for the corrections will not toll.
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.