5 Written questions
5 Matching questions
- 1212: If the board has a matter of interest in deciding the case (like wanting more info on case law, or the applicability of prior art that is not already on the record), then it can
- 1214: What to do when the Board rejects on a New Ground: (remember, now there is a new issue for the applicant to respond to):
The applicant's choices are:
- 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:
- What is a caveat for appeals?
- Option 2: Going to the DC Circuit Court:
- a 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.
- b One important caveat: Remember that when filing an RCE after a final rejection the applicant has a choice: Either appeal, or file the RCE. By filing an RCE the applicant is agreeing not to file an appeal, at least until the claim is rejected under the RCE itself. So even if there are 2 rejections in the original app, when the applicant files an RCE he is waiving the appeal until there is another rejection.
- c 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.
- 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. Pretend like this is an initial rejection from an examiner in an normal examination and re-open the examination. The applicant will file the standard 37 CFR 1.111 response, and can have the 37 CFR 1.130/1.131/1.132 affidavits and extra evidence if necessary
Prosecution might be re-opened for this claim, but it is not a full re-opening of prosecution on the whole app, just on the claim in question.
2. Keep inside the appeal process by requesting a re-hearing before the board to address the new ground.
3)1214.03: The Rehearing:
The applicant will try to specifically show where he believes the board misapprehended the claim and why the claim should be allowed.
5 Multiple choice questions
- Closes prosecution for rejected claims
Can enter a new ground of rejection for any claim
- A failure to provide the appeal brief will result in dismissal of the appeal. However, if some of the claims in the patent were originally allowed, then the parts of the app that are allowed will go back to the examiner and the app will not be immediately abandoned. If however none of the claims were originally allowed, the entire app gets abandoned if the applicant fails to provide a brief. (The normal 37 CFR 1.137 revival terms are available if the abandonment was legally 'unintentional' or 'unavoidable'; remember that a successful 37 CFR 1.137 acts as an RCE).
- 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.
- 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).
- 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.
5 True/False questions
1214.05: What happens when Claims are Withdrawn from the Appeal: → At this point, the app goes directly back to the examiner, he will either then put all the claims in allowance and get the patent ready for issue, or the examiner may request his own re-hearing (again a 2 month time frame for that re-hearing).
Amendments filed on or after the date of the appeal brief: (less leeway) → 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).
When should the request for an oral hearing be made? → Optional; must be filed within 2 months of examiner's answer
Good cause extension of time
Timing → 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).
What is two actions by patentee are not appealable? → 1) non-entered claims, and
2) non-entered amendments