What are the responsibilities of parties regarding litigation in inter partes reexamination?
In inter partes reexamination proceedings, both the patent owner and the third-party requester have responsibilities regarding litigation. The MPEP states: The patent owner is reminded of the continuing responsibility under 37 CFR 1.985(a), to apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving Patent 9,999,999 throughout the course of this…
Read MoreWhat are the time extensions available in inter partes reexamination proceedings?
Time extensions in inter partes reexamination proceedings are limited and strictly regulated. The MPEP states: Extensions of time under 37 CFR 1.136(a) will not be permitted in inter partes reexamination proceedings because the provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexamination proceeding. Key points about time…
Read MoreHow are new issues raised by a third-party requester handled in reexamination?
When a third-party requester raises new issues in their reply during a reexamination proceeding, the examiner must determine whether these issues are within the scope of reexamination. MPEP 2253 provides guidance on this matter: “If the requester’s reply to the patent owner’s statement raises issues not previously presented, such issues will be treated by the…
Read MoreWhat are the requirements for document service in inter partes reexamination?
In inter partes reexamination, there are specific requirements for document service to ensure both parties are informed of all communications. According to MPEP 2654, which cites 35 U.S.C. 314(b)(1): “With the exception of the inter partes reexamination request, any document filed by either the patent owner or the third-party requester shall be served on the…
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