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§ 1.979 Action following decision by the Board of Patent Appeals and Interferences or dismissal of appeal in - PATENT RULES
§ 1.979 Action following decision by the Board of Patent Appeals and Interferences or dismissal of appeal in inter partes reexamination.
(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 of Patent Appeals and Interferences under § 1.977(a),
(2) The original § 1.977(b) decision under the provisions of § 1.977(b)(2),
(3) The expiration of the time for the patent owner to take action under § 1.977(b)(2), or
(4) The new decision of the Board of Patent Appeals and Interferences under § 1.977(f).
(b) 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 (c) of this section, any party to the appeal 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.
(c) 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 of Patent Appeals and Interferences will issue a decision on rehearing. This decision is deemed to incorporate the earlier decision, except for those portions specifically withdrawn. If the decision on rehearing becomes, in effect, a new decision, and the Board of Patent Appeals and Interferences so states, 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.
(d) Any request for rehearing shall state the points believed to have been misapprehended or overlooked in rendering the decision and also state all other grounds upon which rehearing is sought.
(e) The parties to an appeal to the Board of Patent Appeals and Interferences may not appeal to the U.S. Court of Appeals for the Federal Circuit under § 1.983 until all parties rights to request rehearing have been exhausted, at which time the decision of the Board of Patent Appeals and Interferences is final and appealable by any party to an appeal to the Board of Patent Appeals and Interferences who is dissatisfied with the final decision of the Board of Patent Appeals and Interferences.
(f) An appeal to the Board of Patent Appeals and Interferences by a party is considered terminated by the dismissal of that party's appeal, the failure of the party to timely request rehearing under § 1.979(a) or (c), or the failure of the party to timely file an appeal to the U.S. Court of Appeals for the Federal Circuit under § 1.983. The date of such termination is the date on which the appeal is dismissed, the date on which the time for rehearing expires, or the date on which the time for the appeal to the U.S. Court of Appeals for the Federal Circuit expires. If an appeal to the U.S. Court of Appeals for the Federal Circuit has been filed, the appeal is considered terminated when the mandate is issued by the U.S. Court of Appeals for the Federal Circuit. Upon termination of an appeal, if no other appeal is present, the reexamination proceeding will be terminated and the Director will issue a certificate under § 1.997.
(g) 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.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (f) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (e) & (f) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004]
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