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2682    Action Following Decision [R-07.2015]

37 CFR 41.79  Rehearing.

  • (a) Parties to the appeal may file a request for rehearing of the decision within one month of the date of:
  • (b)
    • (1) The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing except as permitted by paragraphs (b)(2) and (b)(3) of this section.
    • (2) Upon a showing of good cause, appellant and/or respondent may present a new argument based upon a recent relevant decision of either the Board or a Federal Court.
    • (3) New arguments responding to a new ground of rejection made pursuant to § 41.77(b) are permitted.
  • (c) Within one month of the date of service of any request for rehearing under paragraph (a) of this section, or any further request for rehearing under paragraph (d) of this section, the owner and all requesters may once file comments in opposition to the request for rehearing or the further request for rehearing. The comments in opposition must be limited to the issues raised in the request for rehearing or the further request for rehearing.
  • (d) If a party to an appeal files a request for rehearing under paragraph (a) of this section, or a further request for rehearing under this section, the Board shall render a decision on the request for rehearing. The decision on the request for rehearing is deemed to incorporate the earlier opinion reflecting its decision for appeal, except for those portions specifically withdrawn on rehearing and is final for the purpose of judicial review, except when noted otherwise in the decision on rehearing. If the Board opinion reflecting its decision on rehearing becomes, in effect, a new decision, and the Board so indicates, then any party to the appeal may, within one month of the new decision, file a further request for rehearing of the new decision under this subsection. Such further request for rehearing must comply with paragraph (b) of this section.
  • (e) The times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (c) of this section, and for submitting comments under paragraph (b) of this section may not be extended.

37 CFR 41.81  Action following decision.

The parties to an appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under § 1.983 of this title until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.

37 CFR 1.981  Reopening after a final decision of the Board of Patent Appeals and Interferences.

When a decision by the Patent Trial and Appeal Board on appeal has become final for judicial review, prosecution of the inter partes reexamination proceeding will not be reopened or reconsidered by the primary examiner except under the provisions of § 41.77 of this title without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.

The provisions of 37 CFR 41.77 through 41.79 and 37 CFR 1.979 through 1.983 deal with action by the parties and the examiner following a decision by the Board in an inter partes reexamination proceeding.

The Board, in its decision, may affirm or reverse the decision of the examiner, in whole or in part, on the grounds of rejection specified by the examiner and/or on the proposed grounds presented by a third party requester but not adopted by the examiner. A rejection of claims by the examiner may also be affirmed on the basis of the argument presented by the third party requester, and a finding of patentability may also be affirmed on the basis of the arguments presented by the patent owner. Further handling of the reexamination proceeding will depend upon the nature of the Board’s decision.

Subsection I below discusses procedures in the situation where no new grounds of rejection are found in the decision by the Board. Subsection II discusses procedures in the situation where new ground(s) of rejection were entered in the Board decision.

I.NO NEW GROUNDS: THE BOARD AFFIRMS, REVERSES A REJECTION, OR AFFIRMS-IN-PART (AND REVERSES ONLY AS TO REJECTION(S))

Where the Board decision (A) affirms the examiner in whole, (B) reverses the examiner in whole where only rejections were appealed, or (C) affirms in part and reverses in part, where the only examiner decision overturned is that of rejecting claims, there are no new grounds of rejection in the decision. In these situations, the CRU processes any papers filed by a party to the appeal in response to the decision and if no further action is taken by a party within the appropriate time period, then the CRU, in due course, prepares the proceeding for its conclusion in view of the Board decision, as appropriate. The Board retains jurisdiction of the proceeding until the expiration of both the period for requesting rehearing of the decision by the Board (in accordance with 37 CFR 41.79), and the period for seeking court review of the decision of the Board (in accordance with 37 CFR 1.983). The time period for seeking review of a decision of the Board by the U.S. Court of Appeals for the Federal Circuit pursuant to 37 CFR 1.983 is generally two months from the date of the decision of the Board plus any extension obtained under 37 CFR 1.304. A final decision may be (1) the original decision of the Board under 37 CFR 41.77(a) if no action under 37 CFR 41.79 is taken by any party; (2) a decision under 37 CFR 41.77(f); or (3) a decision under 37 CFR 41.79(d). The two-month time period set forth in 37 CFR 1.304 for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit starts on: (1) the mailing date of the final Board decision if the decision is mailed to the appellant, or (2) the notification date of the final Board decision if electronic mail notification is sent to the appellant under the e-Office Action program, as indicated on form PTOL-90 accompanying the Board decision. The time period for requesting rehearing under 37 CFR 41.79 is one month from the date of the decision of the Board and the one month period may not be extended. 37 CFR 41.79(e).

A.No Action Taken by Parties to the Appeal

If no action has been taken by any party to the appeal and at least two weeks after the time for action by any party (to the appeal) has expired, the CRU support staff will notify the examiner that the proceeding is ready to be concluded. The delay is to permit any information as to requesting rehearing, or the filing of an appeal, to reach the Office. The examiner will take up the reexamination proceeding for action by issuing a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) in accordance with MPEP § 2687, which will terminate the prosecution of the reexamination proceeding.

The following form paragraph should be used where the NIRC is issued:

¶ 26.67.01    Periods for Seeking Court Review or Rehearing Have Lapsed

The periods for seeking court review of, or a rehearing of, the decision of the Board rendered [1] have expired and no further action has been taken by any party to the appeal. Accordingly, the appeal in this reexamination proceeding is considered terminated; see 37 CFR 1.979(b). The present Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) is issued in accordance with MPEP § 2687 in order to terminate the present reexamination prosecution.

Examiner Note:

In bracket 1, enter the date of the Board decision.

The NIRC will indicate the status of all the claims in the case as a result of the Board decision. A statement will be included in the NIRC that “Claims ____ have been canceled as a result of the decision of the Board dated _______.”

Claims indicated as patentable prior to appeal except for their dependency from rejected claims not in the original patent will be treated as if they were rejected. See MPEP § 1214.06. The following two examples should be noted (assume that claim 10 has been added to the patent during the reexamination, or claim 10 is a patent claim that was amended during the reexamination and claim 11 depends on claim 10):

- If the Board affirms a rejection of claim 10 and claim 11 was objected to prior to appeal as being patentable except for its dependency from claim 10, the examiner should cancel both claims 10 and 11 by formal examiner’s amendment attached as part of the NIRC.

- On the other hand, if both claims 10 and 11 were rejected prior to the appeal, then the patent owner was never put on notice that claim 11 could be made allowable by placing it in independent form. Thus, where the Board affirms a rejection against claim 10 but reverses the rejections against dependent claim 11, the examiner should convert dependent claim 11 into independent form by formal examiner’s amendment and cancel claim 10 (for which the rejection was affirmed) in the NIRC. In this instance, the examiner could alternatively set a time period of one month or 30 days (whichever is longer) in which the patent owner may rewrite dependent claim 11 in independent form. Extensions of time under 37 CFR 1.956 will be permitted. If no timely response is received, the examiner will cancel both claims 10 and 11 in the NIRC.

See MPEP § 2687 for further guidance in issuing the NIRC and terminating the prosecution of the reexamination proceeding.

B.A Request for Rehearing of the Decision

Any party to the appeal not satisfied with the Board decision may file a (i.e., single) request for rehearing of the decision. The request must be filed within one month from the date of (1) the original decision under 37 CFR 41.77(a) ; (2) the original 37 CFR 41.77(b) decision under the provisions of 37 CFR 41.77(b)(2); (3) the expiration of the time for the patent owner to take action under 37 CFR 41.77(b)(2); or (4) a new decision under 37 CFR 41.77(f) or 37 CFR 41.79(d) specifically designated as “new”. The one month period may not be extended. See 37 CFR 41.79(e). The provisions of 37 CFR 41.79(b) require that any request must specifically state the points believed to have been misapprehended or overlooked in the Board’s decision, as well as all other grounds which rehearing is sought.

If a party does file a request for rehearing of the decision, any opposing party appellant or opposing party respondent may, within one month from the date of service of the request for rehearing, file responsive comments on the request for rehearing. 37 CFR 41.79(c). This one month period may not be extended. 37 CFR 41.79(e).

Where at least one request for rehearing of the decision is granted, the Board’s decision on the request for rehearing is deemed to incorporate the earlier opinion reflecting its decision for appeal, except for those portions specifically withdrawn on rehearing, and the decision is final for the purpose of judicial review, except when noted otherwise in the decision on rehearing. If the Board opinion reflecting its decision on rehearing indicates that the decision is a new decision, then any party to the appeal may, within one month of the new decision, file a further request for rehearing of the new decision. Such further request for rehearing must comply with 37 CFR 41.79(b). If the Board’s final decision on the request for rehearing is not timely appealed to the court, jurisdiction of the case is returned to the CRU for processing and subsequent forwarding to the examiner. The examiner will proceed to issue a NIRC and terminate the prosecution of the reexamination proceeding. 37 CFR 1.979(b).

II.NEW GROUND OF REJECTION BY BOARD

Pursuant to 37 CFR 41.77(b), the Board may, in its decision on appeal, make a new rejection of one or more appealed claims on either the same grounds with different reasoning or on different grounds from those applied against the claims. Pursuant to 37 CFR 41.77(a), when the Board decision reverses the examiner in whole (or affirms in part and reverses in part) as to the proposed rejections the examiner refused to adopt or had withdrawn, such a reversal constitutes a decision adverse to the patentability of the claims. Such reversal will be set forth in the Board’s decision as a new ground of rejection under 37 CFR 41.77(b).

In this situation, the patent owner has the option of:

  • (A) requesting rehearing based upon the same record under 37 CFR 41.79(a); or
  • (B) filing a response requesting reopening prosecution before the examiner including an appropriate amendment of the newly rejected claim(s), and/or new evidence (e.g., a showing of facts) relating to the new ground(s) of rejection of the claim(s).

After a decision under 37 CFR 41.77(b), the parties do not have the option of an immediate appeal to the U.S. Court of Appeals for the Federal Circuit because the decision under 37 CFR 41.77(b) is not a final decision. Patent owner must exercise one of the two above-mentioned options within one month from the date of the decision. Extension of time are available under37 CFR 1.956 where reopening will be requested; no extensions of time are available to request rehearing. See 37 CFR 41.77(g). If the patent owner does not exercise either option, then the Board may terminate the appeal as to the newly rejected claim(s). If the patent owner files a submission under 37 CFR 41.77(b)(1) or (2) that is denied entry by the Board, then the Board may terminate the appeal as to the newly rejected claim(s), designate the decision as to any remaining claims as a final decision, and permit a request for rehearing for the affirmed claims within one month from the date of notice of termination.

Jurisdiction of the proceeding remains with the Board until the Board (1) remands the proceeding to the examiner or (2) designates the decision as a final decision. If the Board remands the proceeding to the examiner after the Board approves the entry of the patent owner’s request to reopen prosecution, prosecution will be limited in accordance with the policies and procedures set forth in subsection II.B. below. The examiner may not, sua sponte, reopen prosecution, or, for example, issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC).

Where the Board applies new ground(s) of rejection to at least one claim, the patent owner may file either a response requesting a reopening of prosecution relating to the new ground(s) of rejection or a request for rehearing under 37 CFR 41.79(a)(2) of the new ground(s) of rejection based on the same record. In other words, patent owner may not file both a response requesting a reopening of prosecution and also a request for rehearing under 37 CFR 41.79(a) for the same decision. A patent owner may also not file both a request for rehearing and a conditional request to reopen in the event that the request for rehearing is denied. If such an improper conditional request to reopen prosecution is received, then the submission will be treated as a request to reopen prosecution under 37 CFR 41.77(b)(1), and the request for rehearing will not be entered or considered. A patent owner seeking to request one of the permitted options must comply with the timing provisions set forth in 37 CFR 41.77(g) and 41.79(a)(2), both of which run from the date of the original decision of the Board under 37 CFR 41.77(b). Should a patent owner desire to request reopening with respect to a new ground of rejection and also to request rehearing relating to another ground of rejection not newly made by the Board in the decision, patent owner should request reopening of prosecution under 37 CFR 41.77(b)(1) addressing the new ground(s) of rejection only. Once the appeal has resulted in a new Board decision under 37 CFR 41.77(f), that new Board decision will incorporate the earlier decision, except for those portions specifically withdrawn. At that time, patent owner has one month from the date of the new decision, pursuant to 37 CFR 41.79(a)(4), to request rehearing of the new Board decision including the portions of the earlier decision incorporated into the new decision. Note, however, that if a patent owner files a request for reopening under 37 CFR 41.77(b)(1) and the Board denies the entry of that request, patent owner has no opportunity to subsequently request rehearing under 37 CFR 41.77(b)(2). A requester may seek rehearing under 37 CFR 41.79 of a Board decision containing a new ground of rejection either within one month of the expiration of the time for the patent owner to take action under 37 CFR 41.77(b)(2), or within one month of the new Board decision under 37 CFR 41.77(f).

A.Proceeding under 37 CFR 41.77(b)(2): Requesting Rehearing of the Decision Which Includes a New Ground of Rejection

A patent owner’s request for rehearing by the Board must be filed within a nonextendable one month period set by 37 CFR 41.79(a). By proceeding in this manner, the patent owner waives his or her right to further prosecution before the examiner. In re Greenfield, 40 F.2d 775, 5 USPQ 474 (CCPA 1930). If the patent owner does file a request for rehearing of the decision, any third party requester that is a party to the appeal may, within a non-extendable one month period from the date of service of the request for rehearing, file responsive comments on the request. See37 CFR 41.79(c).

B.Proceeding under 37 CFR 41.77(b)(1): Requesting Reopening of Prosecution and Submission of Amendment or Showing of Facts After Decision Which Includes a New Ground of Rejection1.Patent Owner’s Submission under 37 CFR 41.77(b)(1)

If the patent owner elects to proceed before the examiner, the patent owner must take action within the one month period for response which will be set in the Board’s decision. The decision may provide procedural guidance regarding what will be acceptable in a request for reopening prosecution under 37 CFR 41.77. Extensions of time under 37 CFR 1.956 are available to extend the period. 37 CFR 41.77(g). The extension(s) may not, however, extend the time period more than six months from the date of the Board’s decision.

When the patent owner submits a response pursuant to 37 CFR 41.77(b)(1) and the Board grants the request to reopen prosecution, the proceeding will then be governed by the procedures set forth in 37 CFR 41.77(c) through 37 CFR 41.77(g). Under 37 CFR 41.77(b)(1), the patent owner may amend the claims involved, or substitute new claims to avoid the art or reasons stated by the Board. Ex parte Burrowes, 110 OG 599, 1904 C.D. 155 (Comm’r Pat. 1904). The patent owner may, alternatively or in addition, submit evidence relating to the new rejection(s) set forth by the Board. The new ground(s) of rejection raised by the Board does not “reopen the prosecution” (under 37 CFR 41.77(b)(1) and 37 CFR 41.77(c) through 37 CFR 41.77(f)) except as to that subject matter to which the new rejection was applied. Accordingly, the Board will review any submission under 37 CFR 41.77(b)(1) and will determine whether the request for reopening will be granted and if the submission should be entered into the record. Mere argument without either amendment (of the claims so rejected) or the submission of evidence or a showing of facts (as to the claims so rejected) is not in compliance and the Board will not grant the request to reopen. If the Board denies patent owner’s request to reopen prosecution under 37 CFR 41.77(b)(1), no opportunity to subsequently request rehearing under 37 CFR 41.77(b)(2) will be provided. Any amendment or new evidence not directed to that subject matter to which the new rejection was applied will be refused entry and will not be considered.

2.Third Party Requester Comments under 37 CFR 41.77(c)

In accordance with 37 CFR 41.77(c), the third party requester may once file comments on the patent owner’s submission under 37 CFR 41.77(b)(1) within one month of the date of service of the request to reopen prosecution. The one-month time period cannot be extended. See 37 CFR 41.77(g). The comments must be limited to issues concerning the new ground(s) of rejection raised by the decision of the Board or the patent owner’s response. The comments may include new evidence and arguments if limited to support the new grounds of rejection by the Board, including new evidence and arguments directed towards amended or new claims if necessitated by patent owner’s submission under 37 CFR 41.77(b)(1). The Board will review any comments under 37 CFR 41.77(c) to determine if the comments should be entered into the record. Any comments that address issues not raised by the new grounds of rejection in the Board’s decision or the patent owner’s response under 37 CFR 41.77(b)(1) will be refused entry and will not be considered. If the third party requester is not an appellant or cross-appellant, such a requester may still file comments under 37 CFR 41.77(c) if the comments are presented with payment of the appeal fee set forth in 37 CFR 41.20(b)(1) and appeal brief fee set forth in 37 CFR 41.20(b)(2).

3.Examiner’s Determination under 37 CFR 41.77(d)

The Board will formally remand the proceeding back to the examiner prior to the examiner’s determination under 37 CFR 41.77(d). In the remand order, the Board should indicate whether the patent owner’s response under 37 CFR 41.77(b)(1) is entered, not entered, or entered-in-part. If the patent owner’s response is entered-in-part, the remand order should instruct the examiner which portion(s) or evidence is not entered. For example, the remand order may instruct the examiner that the amendment cancelling claim 1 and adding new proposed substitute claim 10 is entered but the declaration and exhibits under 37 CFR 1.131(a) to disqualify the Jones reference is not entered. In the remand order, the Board should similarly explain whether any third party requester comment(s) is entered, not entered, or entered-in-part. The examiner should assume that the Board has entered papers filed under 37 CFR 41.77(b)(1) or (c) unless the remand order explicitly states otherwise. If the examiner is uncertain about the entry status of a paper, the examiner should discuss the issue with his or her SPRS, who then may contact the Board to seek clarification, if necessary.

After a remand order by the Board, the examiner will consider the submissions (or portions thereof) under 37 CFR 41.77(b)(1) (e.g., patent owner’s request to reopen) and 37 CFR 41.77(c) (e.g., third party requester comments) that were entered by the Board. The examiner may only issue a determination under 37 CFR 41.77(d) and may not issue another type of Office action, such as a nonfinal action, an advisory action, a Right of Appeal Notice, or a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC).

The determination under 37 CFR 41.77(d) is limited to the examiner’s determination as to whether or not the new statutory ground(s) of rejection in the Board decision has been overcome. Similar to the situation where the Board applies a new ground of rejection in ex parte examination, unless an amendment or new evidence not of record at the time of the Board decision is presented, the examiner’s determination may not indicate that the rejection has been overcome. The examiner will explain the reasoning for his or her opinion. For example, the examiner may find that the patent owner’s amendment to independent claim 1 introduces a new limitation that is not taught by any of the references applied in the new ground(s) of rejection. The examiner should explicitly identify the limitation that is not taught and provide an explanation of why the examiner finds that the references applied in the new ground(s) of rejection do not teach the missing limitation. In the determination under 37 CFR 41.77(d), the examiner will address any entered third party requester’s arguments and evidence. For example, if the Board enters the requester’s evidence of inherency, which is related to the Board’s new ground of rejection, the examiner should address whether the evidence is, or is not, sufficient to show inherency. The examiner will not comment on any entered arguments or comments that are not limited to the new ground(s) of rejection issued in the Board’s decision (e.g., arguments or comments that addressed a rejection affirmed in the Board’s decision). The examiner also will not comment on any unentered amendments, arguments, or evidenced submitted by either the patent owner or a third party requester.

The determination will set (1) a one-month time period from the mailing date of the determination for the patent owner and third party requester(s) to file comments on the examiner’s determination under 37 CFR 41.77(d) and (2) a one month time period from the date of service of such comments for the patent owner and third party requester(s) to file a reply to the comments. For example, form paragraph 26.75 may be used:

¶ 26.75    Time Period for Response under 37 CFR 41.77(e)

Periods for response to this determination are identified in 37 CFR 41.77(e). Following expiration of those time periods, the proceeding will be returned to the Board for reconsideration under 37 CFR 41.77(f). Note that under 37 CFR 41.77(e), patent owner and third party requester responsive comments are due one month from the mailing date of this determination, and both third party requester and patent owner replies to those comments are then due one month from date of service of the comments. These time periods cannot be extended. See 37 CFR 41.77(g).

4.Comments under 37 CFR 41.77(e)

Patent owner and third party requester(s) have one month from the mailing date of the determination under 37 CFR 41.77(d) to once file comments on the determination. If any comments are filed, each opposing party may then file a single reply to the comments from an opposing party. No amendments or further evidence may be submitted as part of these comments. The reply must be filed within one month from the date of service of the comments. These time periods cannot be extended. See 37 CFR 41.77(g). If a third party requester is not an appellant or cross-appellant, such a requester may still file comments under 37 CFR 41.77(e) if the comments are presented with payment of the appeal fee set forth in 37 CFR 41.20(b)(1) and appeal brief fee set forth in 37 CFR 41.20(b)(2).

After receipt of any comments and replies that are filed, the examiner will determine if the comments and replies are compliant with the requirements of 37 CFR 41.77(e). This review is similar to the scope of an examiner’s review of a rebuttal brief for compliance with 37 CFR 41.71. See MPEP § 2678. Comments that are not limited to issues raised in the determination under 37 CFR 41.77(d) will not be entered. Replies that are not limited to issues raised by the comments to the determination will not be entered. Comments and/or replies that do not comply with 37 CFR 41.77(e) will not be entered but will remain in the record for the proceeding. The examiner will notify the parties and the Board of the compliance with 37 CFR 41.77(e) and will forward the proceeding to the Board. Specifically, the examiner will issue a communication (e.g., form PTOL-90) which acknowledges that the comments and replies were filed, states which submissions were entered or not entered, and states that the proceeding is being forwarded to the Board.

If the patent owner or the third party fails to file comments or replies under 37 CFR 41.77(e), after expiration of the applicable time period, the examiner will return the proceeding to the Board for action in accordance with 37 CFR 41.77(f) by issuing a communication (e.g., a form PTOL-90), which states the lack of receipt of either the comments or replies and that the proceeding is being forwarded to the Board.

After the issuance of the communication pertaining to the comments and replies under 37 CFR 41.77(e), jurisdiction of the proceeding will transfer to the Board. In accordance with 37 CFR 41.77(f), the Board will then act upon the proceeding. If the Board issues a final decision, the alternatives available to a party to the appeal are available. See MPEP § 2683.

C.No submission under 37 CFR 41.77(b)(1) or (2)

If the patent owner does not request, or does not properly request, rehearing or reopening of prosecution in accordance with 37 CFR 41.77(b), the Board may terminate the appeal proceeding as to the claim(s) rejected pursuant to 37 CFR 41.77(b) and designate the decision as to any remaining claims final for purposes of judicial review. Final action by the Board will give rise to the alternatives available to a party to the appeal following a final decision by the Board, with respect to any remaining claims.

III.REMAND BY BOARD

In accordance with 37 CFR 41.77(a), the Board, in its decision, may remand the reexamination proceeding to the examiner for further consideration. A Board decision which includes a remand in accordance with 37 CFR 41.77(a) will not be considered a “final decision” in the case.

The Board may remand the case to an examiner where appropriate procedure has not been followed, where further information is needed, or where the examiner is to consider something which the examiner did not yet consider (or it is not clear that the examiner had considered it).

After the examiner has addressed the remand, the examiner will either return the case to the Board (via the CRU) or reopen prosecution, as appropriate. See subsection A. below for policies regarding reopening prosecution after a remand by the Board.

A.Reopening Prosecution of Case

Reopening prosecution of a case after decision by the Board should be a rare occurrence. Proceedings which have been decided by the Board will not be reopened or reconsidered by the primary examiner, unless the provisions of 37 CFR 41.77 apply, or the written consent of the Director of the USPTO is obtained for the consideration of matters not already adjudicated, where sufficient cause has been shown. See 37 CFR 1.981 and MPEP § 1214.07.

The written consent of the CRU Director is required for an action reopening prosecution where the reexamination proceeding has been remanded to the examiner for a failure to follow appropriate procedure, to provide more information, or to consider something not yet considered, and the examiner then concludes, after consideration of all the evidence and argument, that a decision as to patentability made in the RAN should be changed. If so, prosecution would be reopened with the written consent of the CRU Director and an Office action issued, so that any party adversely affected by the change in the examiner’s position will have an opportunity to consider it and subsequently respond the examiner’s new decision.

Once jurisdiction is returned to the CRU from the Board, the CRU Director will decide any petition to reopen prosecution of an inter partes reexamination proceeding after decision by the Board, where no court action has been filed and the time for filing such has expired. MPEP § 1002.02(c), item 1.

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Last Modified: 11/04/2015 11:01:47