Notice of Panel Decision

In the case of Patent Application Prosecution, the Applicant has the right to appeal to the Patent Trial and Appeal Board (PTAB) for the decision made by the Examiner. The Applicant can File for Notice to Appeal for the claims which are rejected by the Examiner at least twice. The applicant can either file Notice of Appeal or Request for Continuation Examination (RCE). The notice of Appeal cannot be filed after the RCE of the Patent Application. We receive the decision from the PTAB against the Appeal as Notice of Panel Decision.

The Applicant can file for the Notice of Appeal with appropriate Fees for the Examiner’s decision. The Applicant then has to File an Appeal Brief within two months from the filing of the Notice of Appeal. The Filing of Appeal Brief is extended to five months. In the hearing of the Appeal, the conference is held between the Examiner, the Applicant, and the PTAB. As per the hearing, the decision is taken, and we receive the Notice of Panel Decision.

The three Notice of Panel Decisions which are received from PTAB is described below:

1. Appeal Decision Affirmed-In-Part – This notice indicated that the PTAB has agreed with Examiner regarding the rejection for one set of the claims. The rejection over the other set of claims is withdrawn. In this scenario, the Patent Application reopens for the Prosecution. The Applicant has to then file an Appeal Brief within Two Months from the receiving date of the Notice of Panel Decision.
2. Appeal Decision Affirmed – This notice indicated that the PTAB has agreed with Examiner rejection of the complete set of claims. In this scenario, the Patent Application reopens for the Prosecution. The Applicant has to then file an Appeal Brief within Two Months from the receiving date of the Notice of Panel Decision.
3. Appeal Decision Reversed – This notice indicated that the PTAB has agreed with Approved with Applicant. The rejection of the complete set of claims is withdrawn. In this scenario, the Patent Application is sent back to Examiner for Notice of Allowance/Allowability. The Applicant has to then file an Appeal Brief within Two Mths from the receiving date of the Notice of Panel Decision.

Once the Panel Decision is received, the time period to file an appeal brief is modified to one month from the receiving date or two months from the receipt of the Notice of Appeal. We can get the extension for Filing the Appeal Brief for up to five months.

For any further queries, feel free to email me at shweta@menteso.com.