ip_legal_services
  For Patent or Trademark Inquiries:
Call: 1-866-387-5386, or
E-mail: ash@ipprocure.com
 
IP Legal Services
36 Greenleigh Drive, Sewell, NJ 08080
90 Great Oaks Blvd., San Jose CA 95119, Tel: 1-866-387-5386
 
 
Patent prosecution: Appeals

An applicant for a patent whose claims has been twice rejected can file an appeal before the Patent Trial and Appeal Board. The procedure for an appeal begins with a notice of appeal and within two months of the notice of appeal an applicant has to file an appeal brief which should contain the following sections.

(i) Real party in interest. A statement identifying by name the real party in interest at the time the appeal brief is filed, except that such statement is not required if the named inventor or inventors are themselves the real party in interest. If an appeal brief does not contain a statement of the real party in interest, the Office may assume that the named inventor or inventors are the real party in interest.

(ii) Related appeals and interferences. A statement identifying by application, patent, appeal or interference number all other prior and pending appeals, interferences or judicial proceedings (collectively, ``related cases'') which satisfy all of the following conditions: Involve an application or patent owned by the appellant or assignee, are known to appellant, the appellant's legal representative, or assignee, and may be related to, directly affect or be directly affected by or have a bearing on the Board's decision in the pending appeal, except that such statement is not required if there are no such related cases. If an appeal brief does not contain a statement of related cases, the Office may assume that there are no such related cases.

(iii) Summary of claimed subject matter. A concise explanation of the subject matter defined in each of the rejected independent claims, which shall refer to the specification in the Record by page and line number or by paragraph number, and to the drawing, if any, by reference characters. For each rejected independent claim, and for each dependent claim argued separately under the provisions of paragraph (c)(1)(iv) of this section, if the claim contains a means plus function or step plus function recitation as permitted by 35 U.S.C. 112, sixth paragraph, then the concise explanation must identify the structure, material, or acts described in the specification in the Record as corresponding to each claimed function with reference to the specification in the Record by page and line number or by paragraph number, and to the drawing, if any, by reference characters. Reference to the patent application publication does not satisfy the requirements of this paragraph.

(iv) Argument. The arguments of appellant with respect to each ground of rejection, and the basis therefor, with citations of the statutes, regulations, authorities, and parts of the Record relied on. The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant. Except as provided for in 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal. Each ground of rejection contested by appellant must be argued under a separate heading, and each heading shall reasonably identify the ground of rejection being contested ( e.g., by claim number, statutory basis, and applied reference, if any). For each ground of rejection applying to two or more claims, the claims may be argued separately (claims are considered by appellant as separately patentable), as a group (all claims subject to the ground of rejection stand or fall together), or as a subgroup (a subset of the claims subject to the ground of rejection stand or fall together). When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone. Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately. Under each heading identifying the ground of rejection being contested, any claim(s) argued separately or as a subgroup shall be argued under a separate subheading that identifies the claim(s) by number. A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.

(v) Claims appendix. An appendix containing a copy of the claims involved in the appeal.

(2) A 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 treatment of amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and 41.33 for treatment of amendments, affidavits or other Evidence filed after the date of filing the appeal. Review of an examiner's refusal to admit an amendment or Evidence is by petition to the Director. See 1.181 of this title.

 
 
American Business Models American Patent Office American Trademark Services Automobile patent Benefits of Trademarks Registration Business Methods patents Chemical Patents Attorney Copyright Protection in US Copyright Registration in US Design Patent Application US Design Patent Registration E commerce patent law Electronics patent Lawyer Patent Registration in US What is a trademark? Patent Search Patent Registration in California Patent Lawyer New Jersey US Individual Patent Idea Protection Intellectual Property Law Firm US Intellectual Property Services Mechanical patent Attorney New Jersey Patent Lawyer Patent Application Filing Process Patent Attorney in California US Patent Attorney New Jersey Patent Drafting & Filing Patent Drafting Services New Jersey Patent Firm in US Patent Lawyer California Patent Services Trademark Lawyer California Provisional Patents Registered Trademarks Semiconductor patent attorney Software Patents & Trademarks Trademark Application Filing Process Trademark Attorneys in California US Trademark Consultant in New Jersey Trademark Filing in California Trademark Office US Trademark Lawyer New Jersey Trademark Registration in New Jersey Trademark Registry US Trademark Search in US Trademark Services in New Jersey U.S. Patent Search US Patent Office What Does A Patent Attorney Do? What Does A Patent Attorney Do? Who can apply for a patent
Website Design: Right Turn e design