justicedao/patent-legal-corpus huggingface dataset:
37 CFR 41.4 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Timeliness.

§ 41.4 Timeliness. (a) Extensions of time. Extensions of time will be granted only on a showing of good cause except as otherwise provided by rule. (b) Late filings. (1) A late filing that results in either an application becoming abandoned or a reexamination prosecution becoming terminated under § 1.550(d) or § 1.957(b) of this title or limited under § 1.957(c) of this title may be revived as set forth in § 1.137 of this title. (2) A late filing that does not result in either an application becoming abandoned or a reexamination prosecution becoming terminated under § 1.550(d) or § 1.957(b) of this title or limited under § 1.957(c) of this title will be excused upon a showing of excusable neglect or a Board determination that consideration on the merits would be in the interest of justice. (c) Scope. This section governs all proceedings before the Board, but does not apply to filings related to Board proceedings before or after the Board has jurisdiction, such as: (1) Extensions during prosecution (see § 1.136 of this title), (2) Filing of a brief or request for oral hearing (see §§ 41.37, 41.41, 41.47, 41.67, 41.68, 41.71 and 41.73), or (3) Seeking judicial review (see §§ 1.301 to 1.304 of this title). [69 FR 50003, Aug. 12, 2004, as amended at 72 FR 18907, Apr. 16, 2007]
37 CFR 41.52 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Rehearing.

§ 41.52 Rehearing. (a)(1) Appellant may file a single request for rehearing within two months of the date of the original decision of the Board. No request for rehearing from a decision on rehearing will be permitted, unless the rehearing decision so modified the original decision as to become, in effect, a new decision, and the Board states that a second request for rehearing would be permitted. The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section. When a request for rehearing is made, 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. (2) Appellant 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 designated pursuant to § 41.50(b) are permitted. (4) New arguments that the Board's decision contains an undesignated new ground of rejection are permitted. (b) Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings. [69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72299, Nov. 22, 2011]
37 CFR 41.54 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Action following decision.

§ 41.54 Action following decision. After decision by the Board, jurisdiction over an application or patent under ex parte reexamination proceeding passes to the examiner, subject to appellant's right of appeal or other review, for such further action by appellant or by the examiner, as the condition of the application or patent under ex parte reexamination proceeding may require, to carry into effect the decision. [76 FR 72299, Nov. 22, 2011]
37 CFR 41.5 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Counsel.

§ 41.5 Counsel. While the Board has jurisdiction: (a) Appearance pro hac vice. The Board may authorize a person other than a registered practitioner to appear as counsel in a specific proceeding. (b) Disqualification. (1) The Board may disqualify counsel in a specific proceeding after notice and an opportunity to be heard. (2) A decision to disqualify is not final for the purposes of judicial review until certified by the Chief Administrative Patent Judge. (c) Withdrawal. Counsel may not withdraw from a proceeding before the Board unless the Board authorizes such withdrawal. See § 11.116 of this subchapter regarding conditions for withdrawal. (d) Procedure. The Board may institute a proceeding under this section on its own or a party in a contested case may request relief under this section. (e) Referral to the Director of Enrollment and Discipline. Possible violations of the disciplinary rules in part 11 of this subchapter may be referred to the Office of Enrollment and Discipline for investigation. See § 11.22 of this subchapter. [69 FR 50003, Aug. 12, 2004, as amended at 73 FR 47704, Aug. 14, 2008; 78 FR 20211, Apr. 3, 2013]
37 CFR 41.60 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Definitions.

§ 41.60 Definitions. In addition to the definitions in § 41.2, the following definitions apply to proceedings under this subpart unless otherwise clear from the context: Appellant means any party, whether the owner or a requester, filing a notice of appeal or cross appeal under § 41.61. If more than one party appeals or cross appeals, each appealing or cross appealing party is an appellant with respect to the claims to which his or her appeal or cross appeal is directed. Filing means filing with a certificate indicating service of the document under § 1.903 of this title. Owner means the owner of the patent undergoing inter partes reexamination under § 1.915 of this title. Proceeding means an inter partes reexamination proceeding. Appeal to the Board in an ex parte reexamination proceeding is controlled by subpart B of this part. An inter partes reexamination proceeding is not a contested case subject to subpart D. Requester means each party, other than the owner, who requested that the patent undergo inter partes reexamination under § 1.915 of this title. Respondent means any requester responding under § 41.68 to the appellant's brief of the owner, or the owner responding under § 41.68 to the appellant's brief of any requester. No requester may be a respondent to the appellant brief of any other requester.
37 CFR 41.61 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Notice of appeal and cross appeal to Board.

§ 41.61 Notice of appeal and cross appeal to Board. (a)(1) Upon the issuance of a Right of Appeal Notice under § 1.953 of this title, the owner may appeal to the Board with respect to the final rejection of any claim of the patent by filing a notice of appeal within the time provided in the Right of Appeal Notice and paying the fee set forth in § 41.20(b)(1). (2) Upon the issuance of a Right of Appeal Notice under § 1.953 of this title, the requester may appeal to the Board with respect to any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any original, proposed amended, or new claim of the patent by filing a notice of appeal within the time provided in the Right of Appeal Notice and paying the fee set forth in § 41.20(b)(1). (b)(1) Within fourteen days of service of a requester's notice of appeal under paragraph (a)(2) of this section and upon payment of the fee set forth in § 41.20(b)(1), an owner who has not filed a notice of appeal may file a notice of cross appeal with respect to the final rejection of any claim of the patent. (2) Within fourteen days of service of an owner's notice of appeal under paragraph (a)(1) of this section and upon payment of the fee set forth in § 41.20(b)(1), a requester who has not filed a notice of appeal may file a notice of cross appeal with respect to any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any original, proposed amended, or new claim of the patent. (c) The notice of appeal or cross appeal in the proceeding must identify the appealed claim(s) and must be signed by the owner, the requester, or a duly authorized attorney or agent. (d) An appeal or cross appeal, when taken, must be taken from all the rejections of the claims in a Right of Appeal Notice which the patent owner proposes to contest or from all the determinations favorable to patentability, including any final determination not to make a proposed rejection, in a Right of Appeal Notice which a requester proposes to contest. Questions relating to matters not affecting the merits of the invention may be required to be settled before an appeal is decided. (e) The time periods for filing a notice of appeal or cross appeal may not be extended. (f) If a notice of appeal or cross appeal is timely filed but does not comply with any requirement of this section, appellant will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended notice of appeal or cross appeal. If the appellant does not then file an amended notice of appeal or cross appeal within the set time period, or files a notice which does not overcome all the reasons for non-compliance stated in the notification of the reasons for non-compliance, that appellant's appeal or cross appeal will stand dismissed.
37 CFR 41.63 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Amendments and affidavits or other evidence after appeal.

§ 41.63 Amendments and affidavits or other evidence after appeal. (a) Amendments filed after the date of filing an appeal pursuant to § 41.61 canceling claims may be admitted where such cancellation does not affect the scope of any other pending claim in the proceeding. (b) All other amendments filed after the date of filing an appeal pursuant to § 41.61 will not be admitted except as permitted by § 41.77(b)(1). (c) Affidavits or other evidence filed after the date of filing an appeal pursuant to § 41.61 will not be admitted except as permitted by reopening prosecution under § 41.77(b)(1).
37 CFR 41.64 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Jurisdiction over appeal in inter partes reexamination.

§ 41.64 Jurisdiction over appeal in inter partes reexamination. (a) Jurisdiction over the proceeding passes to the Board upon transmittal of the file, including all briefs and examiner's answers, to the Board. (b) If, after receipt and review of the proceeding, the Board determines that the file is not complete or is not in compliance with the requirements of this subpart, the Board may relinquish jurisdiction to the examiner or take other appropriate action to permit completion of the file. (c) Prior to the entry of a decision on the appeal by the Board, the Director may sua sponte order the proceeding remanded to the examiner.
37 CFR 41.66 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Time for filing briefs.

§ 41.66 Time for filing briefs. (a) An appellant's brief must be filed no later than two months from the latest filing date of the last-filed notice of appeal or cross appeal or, if any party to the proceeding is entitled to file an appeal or cross appeal but fails to timely do so, no later than two months from the expiration of the time for filing (by the last party entitled to do so) such notice of appeal or cross appeal. The time for filing an appellant's brief or an amended appellant's brief may not be extended. (b) Once an appellant's brief has been properly filed, any brief must be filed by respondent within one month from the date of service of the appellant's brief. The time for filing a respondent's brief or an amended respondent's brief may not be extended. (c) The examiner will consider both the appellant's and respondent's briefs and may prepare an examiner's answer under § 41.69. (d) Any appellant may file a rebuttal brief under § 41.71 within one month of the date of the examiner's answer. The time for filing a rebuttal brief or an amended rebuttal brief may not be extended. (e) No further submission will be considered and any such submission will be treated in accordance with § 1.939 of this title.
37 CFR 41.69 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Examiner's answer.

§ 41.69 Examiner's answer. (a) The primary examiner may, within such time as directed by the Director, furnish a written answer to the owner's and/or requester's appellant brief or respondent brief including, as may be necessary, such explanation of the invention claimed and of the references relied upon, the grounds of rejection, and the reasons for patentability, including grounds for not adopting any proposed rejection. A copy of the answer shall be supplied to the owner and all requesters. If the primary examiner determines that the appeal does not comply with the provisions of §§ 41.61, 41.66, 41.67 and 41.68 or does not relate to an appealable action, the primary examiner shall make such determination of record. (b) An examiner's answer may not include a new ground of rejection. (c) An examiner's answer may not include a new determination not to make a proposed rejection of a claim. (d) Any new ground of rejection, or any new determination not to make a proposed rejection, must be made in an Office action reopening prosecution.
37 CFR 41.6 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Public availability of Board records.

§ 41.6 Public availability of Board records. (a) Publication —(1) Generally. Any Board action is available for public inspection without a party's permission if rendered in a file open to the public pursuant to § 1.11 of this title or in an application that has been published in accordance with §§ 1.211 to 1.221 of this title. The Office may independently publish any Board action that is available for public inspection. (2) Determination of special circumstances. Any Board action not publishable under paragraph (a)(1) of this section may be published or made available for public inspection if the Director believes that special circumstances warrant publication and a party does not, within two months after being notified of the intention to make the action public, object in writing on the ground that the action discloses the objecting party's trade secret or other confidential information and states with specificity that such information is not otherwise publicly available. If the action discloses such information, the party shall identify the deletions in the text of the action considered necessary to protect the information. If the affected party considers that the entire action must be withheld from the public to protect such information, the party must explain why. The party will be given time, not less than twenty days, to request reconsideration and seek court review before any contested portion of the action is made public over its objection. (b) Record of proceeding. (1) The record of a Board proceeding is available to the public unless a patent application not otherwise available to the public is involved. (2) Notwithstanding paragraph (b)(1) of this section, after a final Board action in or judgment in a Board proceeding, the record of the Board proceeding will be made available to the public if any involved file is or becomes open to the public under § 1.11 of this title or an involved application is or becomes published under §§ 1.211 to 1.221 of this title.
37 CFR 41.71 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Rebuttal brief.

§ 41.71 Rebuttal brief. (a) Within one month of the examiner's answer, any appellant may once file a rebuttal brief. (b)(1) The rebuttal brief of the owner may be directed to the examiner's answer and/or any respondent brief. (2) The rebuttal brief of the owner shall not include any new or non-admitted amendment, or an affidavit or other evidence. See § 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.63 for amendments, affidavits or other evidence filed after the date of filing the appeal. (c)(1) The rebuttal brief of any requester may be directed to the examiner's answer and/or the respondent brief of the owner. (2) The rebuttal brief of a requester may not be directed to the respondent brief of any other requester. (3) No new ground of rejection can be proposed by a requester. (4) The rebuttal brief of a requester shall not include any new or non-admitted affidavit or other evidence. See § 1.116(d) of this title for affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.63(c) for affidavits or other evidence filed after the date of filing the appeal. (d) The rebuttal brief must include a certification that a copy of the rebuttal brief has been served in its entirety on all other parties to the proceeding. The names and addresses of the parties served must be indicated. (e) If a rebuttal brief is timely filed under paragraph (a) of this section but does not comply with all the requirements of paragraphs (a) through (d) of this section, appellant will be notified of the reasons for non-compliance and provided with a non-extendable period of one month within which to file an amended rebuttal brief. If the appellant does not file an amended rebuttal brief during the one-month period, or files an amended rebuttal brief which does not overcome all the reasons for non-compliance stated in the notification, that appellant's rebuttal brief and any amended rebuttal brief by that appellant will not be considered.
37 CFR 41.73 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Oral hearing.

§ 41.73 Oral hearing. (a) An oral hearing should be requested only in those circumstances in which an appellant or a respondent considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as an appeal decided after an oral hearing. (b) If an appellant or a respondent desires an oral hearing, he or she must file, as a separate paper captioned “REQUEST FOR ORAL HEARING,” a written request for such hearing accompanied by the fee set forth in § 41.20(b)(3) within two months after the date of the examiner's answer. The time for requesting an oral hearing may not be extended. The request must include a certification that a copy of the request has been served in its entirety on all other parties to the proceeding. The names and addresses of the parties served must be indicated. (c) If no request and fee for oral hearing have been timely filed by appellant or respondent as required by paragraph (b) of this section, the appeal will be assigned for consideration and decision on the briefs without an oral hearing. (d) If appellant or respondent has complied with all the requirements of paragraph (b) of this section, a hearing date will be set, and notice given to the owner and all requesters. If an oral hearing is held, an oral argument may be presented by, or on behalf of, the primary examiner if considered desirable by either the primary examiner or the Board. The notice shall set a non-extendable period within which all requests for oral hearing shall be submitted by any other party to the appeal desiring to participate in the oral hearing. A hearing will be held as stated in the notice, and oral argument will be limited to thirty minutes for each appellant or respondent who has requested an oral hearing, and twenty minutes for the primary examiner unless otherwise ordered. No appellant or respondent will be permitted to participate in an oral hearing unless he or she has requested an oral hearing and submitted the fee set forth in § 41.20(b)(3). (e)(1) At the oral hearing, each appellant and respondent may only rely on evidence that has been previously entered and considered by the primary examiner and present argument that has been relied upon in the briefs except as permitted by paragraph (e)(2) of this section. The primary examiner may only rely on argument and evidence relied upon in an answer except as permitted by paragraph (e)(2) of this section. The Board will determine the order of the arguments presented at the oral hearing. (2) Upon a showing of good cause, appellant, respondent and/or the primary examiner may rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court. (f) Notwithstanding the submission of a request for oral hearing complying with this rule, if the Board decides that a hearing is not necessary, the Board will so notify the owner and all requesters.
37 CFR 41.79 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Rehearing.

§ 41.79 Rehearing. (a) Parties to the appeal may file a request for rehearing of the decision within one month of the date of: (1) The original decision of the Board under § 41.77(a), (2) The original § 41.77(b) decision under the provisions of § 41.77(b)(2), (3) The expiration of the time for the owner to take action under § 41.77(b)(2), or (4) The new decision of the Board under § 41.77(f). (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.