5 Written questions
5 Matching questions
- 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:
- What is required to be in appeal brief?
- 1214.04: What happens when the Examiner is Reversed in full:
- Decision by Board
- Statutory Disclaimers
- a 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.
- b Closes prosecution for rejected claims
Can enter a new ground of rejection for any claim
- c 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
- d 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).
- e These are where the patentee expressly disclaims 1 or more claims in the patent. This is usually due to losing a lawsuit or something along those lines.
5 Multiple choice questions
- 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.
- (37 CFR 1.4131): Step 1: The applicant has to file notice of appeal, which simply means that the applicant notifies the USPTO of the intent to appeal and includes a fee.
Step 2: Actually file an appeal brief:
TIME LIMITS: The applicant has 2 months from the receipt of the notice to appeal until the appeal brief itself is due. If there is an appeal while there are other outstanding deadlines, the appeal acts to toll the other deadlines (just like a pause button). One weird thing: The notice of appeal is supposed to be sent in person or via the Express Mail system. A mailing certificate does not apply here. Instead the USPTO will consider the "date in" at the post office to be the date of receipt of the notice, and that is the date from which the 2 month period begins counting.
- 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.
- 1) File notice of appeal within 2 months of final (second) rejection on merits
2) EOT available for up to 3 more months
- Petition matters dealing with objections to formal/procedural matters made to the Commissioner
5 True/False questions
How many oral hearing may an applicant request in front of the board → When there is no appeal brief filed within the 37 CFR 41.37 time frame (2 months from filing of notice of appeal) the appeal gets dismissed.
Remember: If some claims are still allowable, the patent can still issue with the allowable claims, but all others get canceled.
1215.02: If at least some of the claims for the app are allowed, then → withdrawing the appeal will not abandon the app (although claims under appeal will be canceled if no further action is taken on them).
What statute deals with appeal procedure? → Appeal procedure within the Office and to the courts has long been provided by stature (35 USC 134)
Affidavits & Other Evidence: → 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.
1207: The Examiner's Answer to an Appeal Brief: What are the three options an examiner has after reading the appeal brief: → 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.