5 Written questions
5 Matching questions
- What statute deals with appeal procedure?
- Terminal Disclaimers
- 1215.03: Partial Withdrawal:
- 1205.02: What actually goes into the Appeal Brief:
- Timing of Filing a Reply Brief
- a What you'd expect, claims that are withdrawn and not acted upon are canceled (2 month time window from the board's decision, or 2 months from an examiner's answer with no reply brief given).
- b Appeal procedure within the Office and to the courts has long been provided by stature (35 USC 134)
- c 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.
- d 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.
- e 1) It's optional, and must be filed within 2 months of examiner's answer
2) Good cause EOT
5 Multiple choice questions
- 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).
- 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.
- Optional; must be filed within 2 months of examiner's answer
Good cause extension of time
- 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).
5 True/False questions
1207: The Examiner's Answer to an Appeal Brief: What are the three options an examiner has after reading the appeal brief: → 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.
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: → 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.
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: → 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.
Option 2: Going to the DC Circuit Court: → 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.
Reconsideration and Court Appeal → 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