Petition and Appeal

Petition and Appeal

1. What triggers petition or appeal?
   1. What triggers a petition: an objection or a formal/procedural requirement, such as:
      1. A new matter objection to specification
      2. A restriction requirement
   2. What triggers an appeal: a rejection of claims on any ground
2. Petition to overcome objections: MPEP1000
   1. General aspects of a petition
      1. Petition to the Director or his delegate
      2. Does not automatically stop the reply clock!  This is not like a Notice of Appeal!
      3. Time to file petitions
         1. Time to file ex parte petitions: 2 months
         2. Inter partes, interferences: 14 days
      4. Fee or no fee: often tested on the exam
   2. Frequently tested petition types
      1. Petition for PTO to withdraw holding an application abandoned MPEP711.03(c)
         1. Not the same as petition to revive an abandoned application
         2. No fee
      2. Petition to obtain a filing date
         1. When PTO did not give a f/d
         2. When PTO gave a late f/d (may be appealable)
         3. No fee
      3. Petition from restriction requirement MPEP818.03(c)
         1. Inter-claim restriction requirement (two or more groups of claims): petition is proper
         2. Intra-claim restriction requirement (within a single claim, such as Markush): appeal is proper
         3. May defer until after final OA or claim allowance, but no later than appeal
         4. Must allow the examiner to reconsider before filing the petition
         5. No fee
      4. Petition from non-appealable decision by an examiner
         1. Petition is proper when
            1. Examiner refuses to enter an amendment, terminal disclaimer or Rule 132 declaration
            2. Examiner makes an action final upon the first OA
            3. Examiner requires the cancellation of alleged new matter from specification
         2. No fee
      5. Petition for waiving a rule not required by a statute
         1. Director can waive a PTO rule, but not a statutory requirement
         2. Decided on merit
         3. Fee required: no small entity discount!
      6. Petition concerning situations not specifically provided for
         1. Decided on merit
         2. Fee required: no small entity discount!
3. Appeal to overcome rejections; MPEP1200
   1. Milestones = NOA, appeal brief, examiner’s answer, (optional oral hearing), reply brief (if elected), Board decision, rehearing request (if elected), further review of Board decisions (if necessary or elected)
   2. Initiating an appeal: filing a Notice of Appeal (NOA)
      1. Time to file NOA
         1. Proper: after final rejection or second rejection (even if not final)
         2. Within the PTO-set time to reply to OA (usually the 3-month SSP)
            1. Extendable automatically and retroactively per Rule 136(a)
            2. May not exceed the statutory 6 month maximum
      2. Certificate of mailing is valid for filing NOA
      3. No need to sign the NOA
      4. Fees: small entity discount available
         1. First fee on filing the appeal
         2. Second fee on submitting the opening brief
         3. Third fee on request for oral hearing if needed
   3. Following the NOA: may add amendments MPEP1206
      1. Amendment/affidavit filed before filing the appeal brief; admitted by the examiner if it (makes the examiner’s job easier)
         1. Cancels claims
         2. Complies with the examiner’s request
         3. Presents the claim in a better form for appeal
         4. Clearly places the application in condition for allowance and gives sufficient reason why the amendment/affidavit is submitted now and not earlier
      2. Amendment/affidavit filed after filing the appeal brief; admitted by the examiner if it
         1. Cancels claims
         2. Rewrite dependent claims into independent form
      3. If the examiner chooses not to enter any post-NOA claims or amendments, the applicant may
         1. Petition (not another appeal!)
         2. File an RCE or continuing application: takes the disputed claims out of the appeals process and puts them back into prosecution
   4. Appeal brief: giving substance to the appeal MPEP1205
      1. Time to file:
         1. Within 2 months from the date of appeal, defined as
            1. In case of USPS express mail: date-in on the mailing label
            2. In case of certificate of mailing: PTO’s actual date of receipt, not the date on the certificate of mailing
         2. Extendable up to 5 months upon payment (hence maximum time to file the appeal brief is 7 months); the statutory 6 month maximum does not apply (reason: this is not a statutory matter)
         3. Failure to file the appeal brief abandons the appeal, but not the application (rejected claims go back to the examiner).  MPEP1215.01
      2. Parts of the appeal brief
         1. The argument itself; must not contain new evidence (e.g., new affidavits or declaration)
         2. Status of claims (rejected, allowed, withdrawn, etc), amendments (entered or not entered)
         3. Summary of claimed subject matter
         4. Grounds of rejection
         5. Real party in interest (e.g., assignee)
         6. Other parts
      3. Rejected claims in the appeal brief stand or fall together, unless the appellant
         1. States that the claims do not stand or fall together, and
         2. Argues the claims separately.
         3. Examiner has no say on the grouping of claims.
      4. Any rejection ground not argued by the appellant is summarily upheld by BPAI.  Lesson: the appellant should argue every rejection ground.  MPEP1205.02
   5. Examiner’s answer to the appeal brief MPEP1207
      1. Time constraint: 2 months from the filing of the appeal brief
      2. Examiner may include new ground of rejection, but must have approval from the Tech Center.
      3. Examiner is not permitted to
         1. Reject a previously allowed or merely objected-to claim: too late to reject now; examiner must reopen prosecution MPEP1207.03(II)
         2. Respond to an argument previously made by the applicant but not responded to by the examiner: too late to respond now MPEP1207.03(II)
      4. In response to examiner’s new ground of rejection, the applicant may introduce new evidence by
         1. Contest this new ground by a timely petition; if not timely petition, then the rights to contest is lost
         2. Filing a reply brief
         3. Requesting the reopening of prosecution
   6. Optional request by the applicant for oral hearing
      1. Due 2 months from the date of the examiner’s answer
      2. Extension of time only available under Rule 136(b) and not Rule 136(a): applicant must provide reason for extension
      3. Oral hearing may delay BPAI’s decision.
   7. Reply brief by the applicant: applicant may choose to put in the last word MPEP1208
      1. Applicant’s automatic right to file
      2. Due 2 months from the examiner’s answer
      3. Extension of time only available under Rule 136(b) and not Rule 136(a): applicant must provide reason for extension
      4. Additional evidence and amendments submitted with the reply brief will only be admitted upon showing good and sufficient reason.
   8. Decision by the Board MPEP1213
      1. The decision closes the prosecution on the rejected claims.
      2. If BPAI finds a claim allowed or allowable, then the claim is sent to allowance or can be amended to place it for allowance.
         1. The examiner is bound by the Board’s statement of allowance
            1. If the Board affirms the rejection of an otherwise allowable dependent claim: the examiner must obey the Board and cancel this dependent claim
            2. If the Board reverses the rejection of an otherwise allowable dependent claim: the examiner must obey the Board and either convert this dependent claim into independent form, or give the applicant one month to rewrite the claim with no time extension whatsoever.
         2. Unless the examiner raises new ground of rejection (e.g., a newly discovered prior art)
      3. The Board may decline to back the examiner, but still reject the claim on new ground.
      4. For any rejection based on new ground, the appellant may
         1. Request for rehearing, or
         2. Request to reopen prosecution, or
         3. If the above requests fail, seek court review (i.e., give PTO a chance first)
   9. Request for rehearing
      1. Time constraint: 2 months from Board’s decision
      2. Extension only for cause (i.e., Rule 16(b)); no fee
   10. Further review of Board decisions: judicial review
       1. Time constraint: 2 months from Board’s final decision; extendable with explanation but no fee
       2. Two routes of court review
          1. Directly appeal to the Federal Circuit: may not add new evidence
          2. Commence quasi de novo civil action in the DC district court
             1. Not available for patents being reexamined where application f/d is on or after 1999-11-29.
             2. May add new evidence
             3. Appealable to the Federal Circuit