Chapter 1200 Flashcards
What is an appeal?
A process in which an applicant, patent owner, or third-party seeks review of a Patent Office decision (includes preliminary issue such as disagreement between the parties)
What can be appealed to the Board?
Rejections
What can be petitioned to the Director?
Objections
When does the notice of appeal need to filed by?
It may be filed within the period for reply set in the last Office Action, which is usually a shortened statutory period of 3 months, and may be filed up to 6 months from the date of the Office Action from which the appeal was taken
What is a brief?
After Notice of Appeal has been filed, the appellate must file a brief explaining the alleged error in the examiner’s reasoning within 2 months from the date of filing the notice of appeal
It must be responsive to every ground of rejection stated by the examiner
If a ground of rejection stated by the examiner is NOT addressed in the appellant’s brief, then the ground of rejection will be sustained by the Board
What is an answer?
The primary examiner has the option of filing an answer to the appellant’s brief which will include:
an explanation of the claimed invention
the rejections issued
the references used to make the rejections
Sometimes, the examiner’s answer will include a new ground of rejection
What happens if the examiner’s answer includes a new ground of rejection?
the examiner may maintain a section 103 obviousness rejection, but can change the reference used in the rejection.
in this case, the applicant can:
request that the examiner reopen prosecution in light of the new ground of rejection OR
maintain the appeal, in which case, the applicant may file a reply brief contesting the assertions presented in the examiner’s answer
Does the primary examiner have the control over the application after jurisdiction passes to the Board?
No
