5 Written Questions
5 Matching Questions
- Reconsideration and Court Appeal
- What statute deals with appeal procedure?
- What is a caveat for appeals?
- 1214.05: What happens when Claims are Withdrawn from the Appeal:
- 1214.04: What happens when the Examiner is Reversed in full:
- a 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.
- b 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).
- c 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 If 2 of the 3 claims are allowed by the Board (reversing the examiner) and the third claim is considered withdrawn since it is not argued, then the 2 reversed claims go into allowance, and the non-argued claim is now canceled by the appellant's acts.
- d Appeal procedure within the Office and to the courts has long been provided by stature (35 USC 134)
- e 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
5 Multiple Choice Questions
- 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.
- There is no obligation to consider new amendments during the appeal, but: If the amendment is just to cancel claims that are not part of the proceeding, or to re-write dependent claims in independent form (this is important to avoid abandonment in some cases, see below) then the board will remand if there is an amendment.
- Petition matters dealing with objections to formal/procedural matters made to the Commissioner
- 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.
- 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.
5 True/False Questions
What are two examples of time limit situations for filing an appeal? → 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).
Failure to provide the 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
1211.01: Further consideration of a rejection: → There is no obligation to consider new amendments during the appeal, but: If the amendment is just to cancel claims that are not part of the proceeding, or to re-write dependent claims in independent form (this is important to avoid abandonment in some cases, see below) then the board will remand if there is an amendment.
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).
Appeals → 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).