Appeals
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This is the 10.2019 version. |
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Where an application, properly assigned to one Technology Center (TC), is found to contain one or more claims, per se, classifiable in one or more other TCs, which claims are not divisible inter se or from the claims which govern classification of the application in the first TC, the application may be referred to the other TC(s) concerned for a report as to the patentability of certain designated claims. This report is known as a Patentability Report (P.R.) and is signed by the primary examiner in the reporting TC.
This section covers the differences between rejections and objections. The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to Review Ed9 10.2019: by the Patent Trial and Appeal Board, while an objection, if persisted, may be Review Ed9 10.2019:ed only by way of petition to the Director of the USPTO.
Any question as to prematureness of a final rejection should be raised, if at all, while the application is still pending before the primary examiner.
Filing a request for continued examination (RCE) provides a means for the applicant to continue with the prosecution of his or her application if prosecution becomes closed. Choosing an RCE is an alternative to filing a continuing application under 37 C.F.R. 1.53(b) or a CPA under 37 C.F.R. 1.53(d). This section covers RCE practice in detail.
This section provides details on extensions of time including when due dates may not be extended. There are two types of due date extensions; automatic extensions under 37 C.F.R. 1.136(a) and extensions for cause under 37 C.F.R. 1.136(b).
Automatic extensions include those when an applicant must reply within a nonstatutory or shortened statutory time. Extensions for cause are used when the applicant is unable to reply within the specified time period and 37 C.F.R. 1.136(a) is unavailable.
This section covers the administrative handling of appeal related documents. The docketing procedure is covered as well as the handling of documents for applications for patents that have been made special. In these cases, the examination will continue to be special including throughout an appeal to the Board.
This section covers details on the Notice of Appeal. Appeal fees, appeals by the patent applicant and appeals by the patent owners are all touched upon.
If an appellant wishes to reinstate an appeal after prosecution is reopened, appellant must file a new notice of appeal and a complete new appeal brief.
Any previously paid appeal fees for filing a notice of appeal, filing an appeal brief (if applicable), requesting an oral hearing (if applicable) and forwarding the appeal to the Board (if applicable) will be applied to the new appeal on the same application as long as a final Board decision has not been made on the prior appeal.
This section discusses the appeal briefs in detail including the time for filing an appeal brief, appeal brief content, and non-compliant appeal briefs and amended briefs.
This section covers oral hearings in detail. 37 CFR 41.47(b) provides that an appellant who desires an oral hearing before the Board must request the hearing by filing, in a separate paper captioned “REQUEST FOR ORAL HEARING,” a written request therefor, accompanied by the appropriate fee, within 2 months after the date of the examiner’s answer or the date of filing of a reply brief, whichever is earlier.
This time period ensures that any request for oral hearing is received not later than when jurisdiction over the proceeding passes to the Board. This time period may only be extended by filing a request under either 37 CFR 1.136(b) or, if the appeal involves an ex parte reexamination proceeding, under 37 CFR 1.550(c).
Any amendment or other paper relating to the appeal filed thereafter, but prior to the decision of the Board, may be considered by the examiner only in the event the case is remanded for that purpose.
To avoid the rendering of decisions by the Board in applications which appellants have decided to abandon or to refile as continuations, appellants should promptly inform the Clerk of the Board in writing as soon as they have positively decided to refile or to abandon an application containing an appeal awaiting a decision. Failure to exercise appropriate diligence in this matter may result in the Board’s refusing an otherwise proper request to vacate its decision.
This section covers the procedure following a new ground of rejection by the Board. When the Board designates a new ground of rejection under 37 CFR 41.50(b), the appellant, as to each claim so rejected, has the option of reopening prosecution before the examiner by submitting an appropriate amendment and/or new evidence; or requesting rehearing before the Board.
The application will be remanded to the examiner for reconsideration if the appellant submits “an appropriate amendment” of the claims rejected by the Board, “or new evidence relating to the claims so rejected, or both.” Further details on the submission of an amendment or new evidence are detailed in this section.
A complete reversal of the examiner’s rejection brings the case up for immediate action by the examiner.
This section outlines the process for judicial Review Ed9 10.2019: of patent applications, reexamination proceedings, inter partes Review Ed9 10.2019:, post-grant Review Ed9 10.2019:, covered business method Review Ed9 10.2019:, and derivation proceedings. It also covers the time for filing a notice of appeal or commencing civil action (which is 63 days of the Board's decision) and the extension of time to seek judicial Review Ed9 10.2019:.
A reissue will not be granted to "recapture" claimed subject matter which was surrendered in an application to obtain the original patent. This section covers the three-step test for recapture:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
In an ex parte reexamination filed on or after November 29, 1999, the patent owner may appeal to the Board only after the final rejection of the claims. This section provides further details on appeals in ex parte reexamination proceedings.
A patent owner who is not satisfied with the decision of the Board may seek judicial Review Ed9 10.2019:. In an ex parte reexamination filed on or after November 29, 1999, the patent owner may appeal the decision of the Board only to the United States Court of Appeals for the Federal Circuit. Further details on appealing to courts is covered in this section.
