How does the USPTO communicate with third-party requesters in inter partes reexamination?
The USPTO uses specific forms to communicate with third-party requesters in inter partes reexamination proceedings. According to MPEP 2696, the primary form for this purpose is: PTOL-2070: Transmittal of Communication to Third Party Requester – Inter Partes Reexamination This form ensures that third-party requesters receive relevant communications throughout the reexamination process, maintaining transparency and allowing…
Read MoreWhat are the requirements for a third-party requester’s reply in ex parte reexamination?
According to MPEP 2254, a third-party requester has specific requirements for filing a reply in ex parte reexamination: The reply must be filed within two months of the date of service of the patent owner’s statement. The reply is limited to issues raised in the patent owner’s statement. No new prior art may be introduced…
Read MoreHow are third-party requester replies considered in reexamination?
In a reexamination proceeding, the examiner must consider replies submitted by third-party requesters. MPEP 2253 provides guidance on this matter: “As to consideration of a reply by a third party requester, the examiner will be guided by 37 CFR 1.535.“ This means that the examiner will follow the rules set forth in 37 CFR 1.535…
Read MoreWhat are the restrictions on a third-party requester’s rebuttal brief in inter partes reexamination?
The restrictions on a third-party requester’s rebuttal brief in inter partes reexamination are specified in MPEP 2678, which cites 37 CFR 41.71(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…
Read MoreHow should examiners handle third-party requester proposed rejections in inter partes reexamination?
Examiners must carefully consider and address all third-party requester proposed rejections in inter partes reexamination. MPEP 2660 provides clear guidance on this matter: “The examiner should not refuse to adopt a rejection properly proposed by the requester as being cumulative to other rejections applied. Rather, any such proposed rejection must be adopted to preserve parties’…
Read MoreCan a third-party requester petition to merge multiple reexamination proceedings?
A third-party requester generally does not have the right to petition for merging multiple reexamination proceedings. According to MPEP § 2283: “The third party requester of a reexamination proceeding (reexamination # 1) does not have a right to file a petition under 37 CFR 1.182 to merge that reexamination proceeding with another reexamination proceeding (reexamination…
Read MoreHow are third-party requesters notified of Office actions in ex parte reexamination?
In ex parte reexamination proceedings involving third-party requesters, the USPTO ensures that they receive copies of all Office actions. According to MPEP 2264: “All actions in a third party requester ex parte reexamination will have a copy mailed to the third party requester. A transmittal form PTOL-465 must be used in providing the third party…
Read MoreWhat is the timeline for third-party requester comments in inter partes reexamination?
In inter partes reexamination, the third-party requester has a specific timeline to submit comments on patent owner responses. According to MPEP 2654, which cites 35 U.S.C. 314(b)(2): “Each time that the patent owner files a response to an action on the merits from the Patent and Trademark Office, the third-party requester shall have one opportunity…
Read MoreCan a third-party requester comment on a patent owner’s response to a new ground of rejection?
Yes, a third-party requester can comment on a patent owner’s response to a new ground of rejection issued by the Patent Trial and Appeal Board (PTAB) in an inter partes reexamination. According to MPEP 2681: Where the owner has filed a response requesting reopening of prosecution under paragraph (b)(1) of this section, any requester, within…
Read MoreCan third-party requesters participate in appeals during ex parte reexamination?
No, third-party requesters cannot participate in appeals during ex parte reexamination. The MPEP 2273 explicitly states: “A third party requester may not appeal, and may not participate in the patent owner’s appeal.” This limitation is a key feature of ex parte reexamination proceedings, distinguishing them from inter partes reviews where third parties have more extensive…
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