justicedao/patent-legal-corpus huggingface dataset:
37 CFR 41.20 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Fees.

§ 41.20 Fees. (a) Petition fee. The fee for filing a petition under this part is: $420.00 (b) Appeal fees. (1) For filing a notice of appeal from the examiner to the Patent Trial and Appeal Board: Table 1 to Paragraph (b)(1) By a micro entity (§ 1.29) $168.00 By a small entity (§ 1.27(a)) 336.00 By other than a small or micro entity 840.00 (2)(i) For filing a brief in support of an appeal in an application or ex parte reexamination proceeding: $0.00 (ii) In addition to the fee for filing a notice of appeal, for filing a brief in support of an appeal in an inter partes reexamination proceeding: Table 2 to Paragraph (b)(2)(ii) By a micro entity (§ 1.29) $420.00 By a small entity (§ 1.27(a)) 840.00 By other than a small or micro entity 2,100.00 (3) For filing a request for an oral hearing before the Board in an appeal under 35 U.S.C. 134: Table 3 to Paragraph (b)(3) By a micro entity (§ 1.29) $272.00 By a small entity (§ 1.27(a)) 544.00 By other than a small or micro entity 1,360.00 (4) In addition to the fee for filing a notice of appeal, for forwarding an appeal in an application or ex parte reexamination proceeding to the Board: Table 4 to Paragraph (b)(4) By a micro entity (§ 1.29) $472.00 By a small entity (§ 1.27(a)) 944.00 By other than a small or micro entity 2,360.00 [78 FR 4290, Jan. 18, 2013, as amended at 82 FR 52817, Nov. 14, 2017; 85 FR 46993, Aug. 3, 2020; 88 FR 17158, Mar. 22, 2023]
37 CFR 41.2 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Definitions.

§ 41.2 Definitions. Unless otherwise clear from the context, the following definitions apply to proceedings under this part: Affidavit means affidavit, declaration under § 1.68 of this title, or statutory declaration under 28 U.S.C. 1746. A transcript of an ex parte deposition may be used as an affidavit in a contested case. Board means the Patent Trial and Appeal Board and includes: (1) For a final Board action: (i) In an appeal or contested case, a panel of the Board. (ii) In a proceeding under § 41.3, the Chief Administrative Patent Judge or another official acting under an express delegation from the Chief Administrative Patent Judge. (2) For non-final actions, a Board member or employee acting with the authority of the Board. Board member means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges. Contested case means a Board proceeding other than an appeal under 35 U.S.C. 134 or a petition under § 41.3. An appeal in an inter partes reexamination is not a contested case. Final means, with regard to a Board action, final for the purposes of judicial review. A decision is final only if: (1) In a panel proceeding. The decision is rendered by a panel, disposes of all issues with regard to the party seeking judicial review, and does not indicate that further action is required; and (2) In other proceedings. The decision disposes of all issues or the decision states it is final. Hearing means consideration of the issues of record. Rehearing means reconsideration. Office means United States Patent and Trademark Office. Panel means at least three Board members acting in a panel proceeding. Panel proceeding means a proceeding in which final action is reserved by statute to at least three Board members, but includes a non-final portion of such a proceeding whether administered by a panel or not. Party, in this part, means any entity participating in a Board proceeding, other than officers and employees of the Office, including: (1) An appellant; (2) A participant in a contested case; (3) A petitioner; and (4) Counsel for any of the above, where context permits. [69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46630, Aug. 6, 2012]
37 CFR 41.30 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Definitions.

§ 41.30 Definitions. In addition to the definitions in § 41.2, the following definitions apply to proceedings under this subpart unless otherwise clear from the context: Applicant means either the applicant in a national application for a patent or the applicant in an application for reissue of a patent. Evidence means something (including testimony, documents and tangible objects) that tends to prove or disprove the existence of an alleged fact, except that for the purpose of this subpart Evidence does not include dictionaries, which may be cited before the Board. Owner means the owner of the patent undergoing ex parte reexamination under § 1.510 of this title. Proceeding means either a national application for a patent, an application for reissue of a patent, an ex parte reexamination proceeding, or a trial before the Patent Trial and Appeal Board. Appeal to the Board in an inter partes reexamination proceeding is controlled by subpart C of this part. Record means the items listed in the content listing of the Image File Wrapper of the official file of the application or reexamination proceeding on appeal or the official file of the Office if other than the Image File Wrapper, excluding amendments, Evidence, and other documents that were not entered. In the case of an issued patent being reissued or reexamined, the Record further includes the Record of the patent being reissued or reexamined. [69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72296, Nov. 22, 2011; 77 FR 46630, Aug. 6, 2012]
37 CFR 41.31 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Appeal to Board.

§ 41.31 Appeal to Board. (a) Who may appeal and how to file an appeal. An appeal is taken to the Board by filing a notice of appeal. (1) Every applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply. (2) Every owner of a patent under ex parte reexamination filed under § 1.510 of this title before November 29, 1999, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply. (3) Every owner of a patent under ex parte reexamination filed under § 1.510 of this title on or after November 29, 1999, any of whose claims has been finally (§ 1.113 of this title) rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply. (b) The signature requirements of §§ 1.33 and 11.18(a) of this title do not apply to a notice of appeal filed under this section. (c) An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office. Questions relating to matters not affecting the merits of the invention may be required to be settled before an appeal can be considered. (d) The time periods set forth in paragraphs (a)(1) through (a)(3) of this section are extendable under the provisions of § 1.136 of this title for patent applications and § 1.550(c) of this title for ex parte reexamination proceedings. [69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72296, Nov. 22, 2011]
37 CFR 41.33 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Amendments and affidavits or other Evidence after appeal.

§ 41.33 Amendments and affidavits or other Evidence after appeal. (a) Amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior to the date a brief is filed pursuant to § 41.37 may be admitted as provided in § 1.116 of this title. (b) Amendments filed on or after the date of filing a brief pursuant to § 41.37 may be admitted: (1) To cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or (2) To rewrite dependent claims into independent form. (c) All other amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), and 41.50(b)(1). (d)(1) An affidavit or other Evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior to the date of filing a brief pursuant to § 41.37 may be admitted if the examiner determines that the affidavit or other Evidence overcomes all rejections under appeal and that a showing of good and sufficient reasons why the affidavit or other Evidence is necessary and was not earlier presented has been made. (2) All other affidavits or other Evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), and 41.50(b)(1). [69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72296, Nov. 22, 2011]
37 CFR 41.35 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Jurisdiction over appeal.

§ 41.35 Jurisdiction over appeal. (a) Beginning of jurisdiction. Jurisdiction over the proceeding passes to the Board upon the filing of a reply brief under § 41.41 or the expiration of the time in which to file such a reply brief, whichever is earlier. (b) End of jurisdiction. The jurisdiction of the Board ends when: (1) The Director or the Board enters a remand order ( see §§ 41.35(c), 41.35(e), and 41.50(a)(1)), (2) The Board enters a final decision ( see § 41.2) and judicial review is sought or the time for seeking judicial review has expired, (3) An express abandonment which complies with § 1.138 of this title is recognized, (4) A request for continued examination is filed which complies with § 1.114 of this title, (5) Appellant fails to take any required action under §§ 41.39(b), 41.50(a)(2), 41.50(b), or 41.50(d), and the Board enters an order of dismissal, or (6) Appellant reopens prosecution pursuant to § 41.40(b) or in response to a new ground of rejection entered in a decision of the Board ( see § 41.50(b)(1)). (c) Remand ordered by the Director. Prior to the entry of a decision on the appeal by the Board ( see § 41.50), the Director may sua sponte order the proceeding remanded to the examiner. (d) Documents filed during Board's jurisdiction. Except for petitions authorized by this part, consideration of any information disclosure statement or petition filed while the Board possesses jurisdiction over the proceeding will be held in abeyance until the Board's jurisdiction ends. (e) Administrative remands ordered by the Board. 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. [76 FR 72297, Nov. 22, 2011]
37 CFR 41.39 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Examiner's answer.

§ 41.39 Examiner's answer. (a) Content of examiner's answer. The primary examiner may, within such time as may be directed by the Director, furnish a written answer to the appeal brief. (1) An examiner's answer is deemed to incorporate all of the grounds of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory action and pre-appeal brief conference decision), unless the examiner's answer expressly indicates that a ground of rejection has been withdrawn. (2) An examiner's answer may include a new ground of rejection. For purposes of the examiner's answer, any rejection that relies upon any Evidence not relied upon in the Office action from which the appeal is taken (as modified by any advisory action) shall be designated by the primary examiner as a new ground of rejection. The examiner must obtain the approval of the Director to furnish an answer that includes a new ground of rejection. (b) Appellant's response to new ground of rejection. If an examiner's answer contains a rejection designated as a new ground of rejection, appellant must within two months from the date of the examiner's answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection: (1) Reopen prosecution. Request that prosecution be reopened before the primary examiner by filing a reply under § 1.111 of this title with or without amendment or submission of affidavits (§§ 1.130, 1.131 or 1.132 of this of this title) or other Evidence. Any amendment or submission of affidavits or other Evidence must be relevant to the new ground of rejection. A request that complies with this paragraph will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. Any request that prosecution be reopened under this paragraph will be treated as a request to withdraw the appeal. (2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in § 41.41. Such a reply brief must address as set forth in § 41.37(c)(1)(iv) each new ground of rejection and should follow the other requirements of a brief as set forth in § 41.37(c). A reply brief may not be accompanied by any amendment, affidavit (§§ 1.130, 1.131 or 1.132 of this of this title) or other Evidence. If a reply brief filed pursuant to this section is accompanied by any amendment, affidavit or other Evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under paragraph (b)(1) of this section. (c) Extensions of time. 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 72298, Nov. 22, 2011]
37 CFR 41.3 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Petitions.

§ 41.3 Petitions. (a) Deciding official. Petitions must be addressed to the Chief Administrative Patent Judge. A panel or an administrative patent judge may certify a question of policy to the Chief Administrative Patent Judge for decision. The Chief Administrative Patent Judge may delegate authority to decide petitions. (b) Scope. This section covers petitions on matters pending before the Board (§§ 41.35, 41.64, 41.103, and 41.205); otherwise, see §§ 1.181 to 1.183 of this title. The following matters are not subject to petition: (1) Issues committed by statute to a panel, and (2) In pending contested cases, procedural issues. See § 41.121(a)(3) and § 41.125(c). (c) Petition fee. The fee set in § 41.20(a) must accompany any petition under this section except no fee is required for a petition under this section seeking supervisory review. (d) Effect on proceeding. The filing of a petition does not stay the time for any other action in a Board proceeding. (e) Time for action. (1) Except as otherwise provided in this part or as the Board may authorize in writing, a party may: (i) File the petition within 14 days from the date of the action from which the party is requesting relief, and (ii) File any request for reconsideration of a petition decision within 14 days of the decision on petition or such other time as the Board may set. (2) A party may not file an opposition or a reply to a petition without Board authorization. [69 FR 50003, Aug. 12, 2004, as amended at 69 FR 58260, Sept. 30, 2004]
37 CFR 41.40 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Tolling of time period to file a reply brief.

§ 41.40 Tolling of time period to file a reply brief. (a) Timing. Any request to seek review of the primary examiner's failure to designate a rejection as a new ground of rejection in an examiner's answer must be by way of a petition to the Director under § 1.181 of this title filed within two months from the entry of the examiner's answer and before the filing of any reply brief. Failure of appellant to timely file such a petition will constitute a waiver of any arguments that a rejection must be designated as a new ground of rejection. (b) Petition granted and prosecution reopened. A decision granting a petition under § 1.181 to designate a new ground of rejection in an examiner's answer will provide a two-month time period in which appellant must file a reply under § 1.111 of this title to reopen the prosecution before the primary examiner. On failure to timely file a reply under § 1.111, the appeal will stand dismissed. (c) Petition not granted and appeal maintained. A decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner's answer will provide a two-month time period in which appellant may file only a single reply brief under § 41.41. (d) Withdrawal of petition and appeal maintained. If a reply brief under § 41.41 is filed within two months from the date of the examiner's answer and on or after the filing of a petition under § 1.181 to designate a new ground of rejection in an examiner's answer, but before a decision on the petition, the reply brief will be treated as a request to withdraw the petition and to maintain the appeal. (e) Extensions of time. 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. [76 FR 72298, Nov. 22, 2011]
37 CFR 41.41 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Reply brief.

§ 41.41 Reply brief. (a) Timing. Appellant may file only a single reply brief to an examiner's answer within the later of two months from the date of either the examiner's answer, or a decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner's answer. (b) Content. (1) A reply brief shall not include any new or non-admitted amendment, or any new or non-admitted 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 § 41.33 for amendments, affidavits or other Evidence filed after the date of filing the appeal. (2) Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown. (c) Extensions of time. 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 72298, Nov. 22, 2011]
37 CFR 41.45 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Appeal forwarding fee.

§ 41.45 Appeal forwarding fee. (a) Timing. Appellant in an application or ex parte reexamination proceeding must pay the fee set forth in § 41.20(b)(4) within the later of two months from the date of either the examiner's answer, or a decision refusing to grant a petition under § 1.181 of this chapter to designate a new ground of rejection in an examiner's answer. (b) Failure to pay appeal forwarding fee. On failure to pay the fee set forth in § 41.20(b)(4) within the period specified in paragraph (a) of this section, the appeal will stand dismissed. (c) Extensions of time. 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. [78 FR 17107, Mar. 20, 2013]
37 CFR 41.47 — Practice Before the Patent Trial and Appeal Board
Current through: 2024-07-01

Oral hearing.

§ 41.47 Oral hearing. (a) An oral hearing should be requested only in those circumstances in which appellant 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 appeals decided after an oral hearing. (b) If appellant desires an oral hearing, appellant 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 from the date of the examiner's answer or on the date of filing of a reply brief, whichever is earlier. (c) If no request and fee for oral hearing have been timely filed by appellant 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 has complied with all the requirements of paragraph (b) of this section, a date for the oral hearing will be set, and due notice thereof given to appellant. 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. A hearing will be held as stated in the notice, and oral argument will ordinarily be limited to twenty minutes for appellant and fifteen minutes for the primary examiner unless otherwise ordered. (e)(1) Appellant will argue first and may reserve time for rebuttal. At the oral hearing, appellant 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 brief or reply brief 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. (2) Upon a showing of good cause, appellant 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 appellant. (g) Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time periods 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 72298, Nov. 22, 2011]