5 Written questions
5 Matching questions
- 1214.06: What happens when the Examiner is sustained in whole or in part:
- 1215.02: If at least some of the claims for the app are allowed, then
- Who can appeal and when?
- 1205.02: What actually goes into the Appeal Brief:
- 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
- a 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.
- b 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.
- c 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.
- d 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.
- e withdrawing the appeal will not abandon the app (although claims under appeal will be canceled if no further action is taken on them).
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.
- 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).
- 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).
- 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)
- There is a mandatory appeal conference when a valid appeal brief is filed. It has: the main examiner for the app, the supervisory patent examiner, and a conferee examiner who is experienced in the area that the patent covers.
5 True/False questions
Timing of Filing a Request for Oral Hearing → Optional; must be filed within 2 months of examiner's answer
Good cause extension of time
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!
1215.03: Partial Withdrawal: → 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.
Appeal process → 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).
When should the examiner's response arrive and what should it include? → 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.