5 Written questions
5 Matching questions
- Reconsideration and Court Appeal
- When should the request for an oral hearing be made?
- Amendments after filing notice
- 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
- What is a caveat for appeals?
- 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 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)
- c 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
- d 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.
- e 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.
5 Multiple choice questions
- 1) File notice of appeal within 2 months of final (second) rejection on merits
2) EOT available for up to 3 more months
- 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.
- 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).
- Appeal procedure within the Office and to the courts has long been provided by stature (35 USC 134)
- 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
When should the examiner's response arrive and what should it include? → Petition matters dealing with objections to formal/procedural matters made to the Commissioner
1215.04: When an appeal is dimissed by 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).
Amendments after the notice of appeal, but before the appeal brief is submitted may contain: → 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).
Appeal Conference and Examiner's Answer → 1) Examiner must answer within 2 months from receipt of appeal brief
2) MPEP section 1208 recites 11 content requirements
3) No new ground of rejection
4) If new grounds, examiner must reopen prosecution; like a regular office action