5 Written questions
5 Matching questions
- 1214.05: What happens when Claims are Withdrawn from the Appeal:
- Amendments filed on or after the date of the appeal brief: (less leeway)
- When is one in a position to appeal?
- Decision by Board
- Who can appeal and when?
- a 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).
- b 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 If 2 of the 3 claims are allowed by the Board (reversing the examiner) and the third claim is considered withdrawn since it is not argued, then the 2 reversed claims go into allowance, and the non-argued claim is now canceled by the appellant's acts.
- c 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).
- d 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.
- e Closes prosecution for rejected claims
Can enter a new ground of rejection for any claim
5 Multiple choice questions
- 1) Must be filed within the greater of: 2 months of PTO receipt of notice; or
2) time left to reply to the action being appealed
3) EOT for up to 5 months
4) Failure to file brief dismisses appeal and abandons application if no allowed claims
- 1) The examiner's supplemental answer may have new grounds for rejection of a claim if it is in response to the board sending the app back for further consideration.
2) Whenever the examiner makes a supplemental answer (even if it does not have new grounds for rejection) the applicant must file one of these forms of response to avoid having the appeal dismissed:
1. Reopen prosecution on the claim, this is the normal 37 CFR 1.111 response to a rejection and it can also have the 37 CFR 1.130/1.131/1.132 affidavits & evidence accompanying the response.
2. Maintain the appeal: By filing a brief (37 CFR 41.41) the appeal can be kept going after the remand & supplemental response.
- 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.
- 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).
- 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).
5 True/False questions
Disclaimers: Remember, there are 2 kinds: → 1) Statutory Disclaimers
2) Terminal Disclaimers:
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: → 1211.01: Further consideration of a rejection
1211.02: Remand to consider a new amendment
1211.03: Remand for new affidavits or declarations
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.
What do petition matters concern and who deals with them? → Appeal matters dealing with substantive issues (rejections); actions on the merits that are made to the Board of Patent Appeals & Interferences
What does MPEP section 1208 recite? → (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.