Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2600 – Optional Inter Partes Reexamination (9)
When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:
- New sheets must be submitted for each drawing sheet that is changed or amended.
- If a new drawing sheet contains multiple figures, each figure must be properly identified according to 37 CFR 1.530(d)(3):
“Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
It’s important to note that:
- Changes cannot be made on the original patent drawings.
- It is not sufficient to generally indicate that the entire sheet is amended (e.g., by placing “Amended” in the header of the drawing sheet).
- Each individual figure that has been amended must be clearly marked as “Amended.”
- New figures must be identified as “New.”
- Canceled figures must be surrounded by brackets and labeled “Canceled.”
After proper identification and labeling, the new sheets of drawings should be entered into the reexamination file.
To learn more:
In the context of attorney withdrawal from patent proceedings, “reasonable notice” is not strictly defined by a specific time period. According to MPEP 2623:
“‘Reasonable notice’ would allow a reasonable amount of time for the client to seek the services of another practitioner prior to the expiration of any applicable response period.”
This means that the withdrawing attorney or agent should provide sufficient notice to their client before any response deadlines, allowing the client enough time to find and engage new representation. The adequacy of notice may depend on factors such as the complexity of the case and the remaining time before any deadlines.
To learn more:
The time limits for filing an appellant brief in an inter partes reexamination are specified in 37 CFR 41.66. The brief must be filed by the later of:
- Two months from the date of the examiner’s answer
- The time remaining in the maximum six-month time period set in MPEP § 2662 to file an appeal brief from the date when the notice of appeal was filed
It’s important to note that “The time for filing an appellant brief may not be extended.” (37 CFR 41.66(a))
To learn more:
Intervening rights in inter partes reexamination are essentially the same as those for reissue patents. The MPEP 2693 clearly states:
“The situation of intervening rights resulting from inter partes reexamination proceedings parallels the intervening rights situation resulting from reissue patents or from ex parte reexamination proceedings. The rights detailed in 35 U.S.C. 252 for reissue apply equally in reexamination and reissue situations.“
This means that the legal principles and protections established for intervening rights in reissue patents are also applicable to patents that have undergone inter partes reexamination.
To learn more:
The PTOL-2066 form is used for issuing the “Right of Appeal Notice” in inter partes reexamination proceedings. According to MPEP 2696, this form is associated with “37 CFR 1.953”. The Right of Appeal Notice is a crucial document that informs the parties involved in the reexamination of their right to appeal the examiner’s decision. This notice typically follows the Action Closing Prosecution and precedes any potential appeal to the Patent Trial and Appeal Board (PTAB).
To learn more:
There are specific limitations on who can be named as a representative in a power of attorney for inter partes reexamination. The MPEP 2613 refers to 37 CFR 1.32(c), which states:
“A power of attorney may only name as representative the inventors or registered patent practitioners.”
This means that only the following individuals can be named as representatives in a power of attorney for inter partes reexamination:
- Inventors of the patent in question
- Registered patent attorneys
- Registered patent agents
It’s important to note that any attorney or agent representing a requester must be a registered patent practitioner with the USPTO.
To learn more:
No, a Patent Trial and Appeal Board (PTAB) decision that includes a new ground of rejection is not considered final. According to MPEP 2681:
A decision which includes a new ground of rejection or a remand will be considered a non-final decision. Until the Board issues a final decision, the parties to the appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under 37 CFR 41.81.
This non-final status allows the patent owner to respond to the new ground of rejection by either:
- Reopening prosecution before the examiner
- Requesting a rehearing by the Board
The decision becomes final only after these procedures have been completed or the time for response has expired.
To learn more:
Including the status of each claim in the Official Gazette notice for an inter partes reexamination certificate is significant because it provides a comprehensive overview of the reexamination’s outcome. According to MPEP 2691: “The Official Gazette notice will include […] an indication of the status of each claim after the conclusion of the reexamination proceeding.”
This information is crucial for several reasons:
- It allows patent professionals to quickly assess which claims have been confirmed, amended, or canceled.
- It helps researchers and competitors understand the current scope of patent protection.
- It provides transparency in the reexamination process and its results.
- It assists in updating patent databases and search systems with the most current information.
By including the status of each claim, the Official Gazette notice serves as a valuable resource for anyone interested in the current state of the reexamined patent.
To learn more:
The “reasonable likelihood that the requester will prevail” (RLP) standard was introduced for reexaminations filed between September 16, 2011, and September 16, 2012. This standard is considered more stringent than the “substantial new question of patentability” (SNQ) standard.
According to the MPEP, which cites House Rep. 112-98:
“The threshold for initiating an inter partes review is elevated from ‘significant new question of patentability’–a standard that currently allows 95% of all requests to be granted–to a standard requiring petitioners to present information showing that their challenge has a reasonable likelihood of success.”
This indicates that the RLP standard requires a higher level of proof than the SNQ standard, making it more challenging for requesters to initiate a reexamination.
To learn more:
MPEP 2613 – Representative Of Requester (1)
There are specific limitations on who can be named as a representative in a power of attorney for inter partes reexamination. The MPEP 2613 refers to 37 CFR 1.32(c), which states:
“A power of attorney may only name as representative the inventors or registered patent practitioners.”
This means that only the following individuals can be named as representatives in a power of attorney for inter partes reexamination:
- Inventors of the patent in question
- Registered patent attorneys
- Registered patent agents
It’s important to note that any attorney or agent representing a requester must be a registered patent practitioner with the USPTO.
To learn more:
MPEP 2623 – Withdrawal Of Attorney Or Agent (1)
In the context of attorney withdrawal from patent proceedings, “reasonable notice” is not strictly defined by a specific time period. According to MPEP 2623:
“‘Reasonable notice’ would allow a reasonable amount of time for the client to seek the services of another practitioner prior to the expiration of any applicable response period.”
This means that the withdrawing attorney or agent should provide sufficient notice to their client before any response deadlines, allowing the client enough time to find and engage new representation. The adequacy of notice may depend on factors such as the complexity of the case and the remaining time before any deadlines.
To learn more:
MPEP 2642 – Criteria For Deciding Request (1)
The “reasonable likelihood that the requester will prevail” (RLP) standard was introduced for reexaminations filed between September 16, 2011, and September 16, 2012. This standard is considered more stringent than the “substantial new question of patentability” (SNQ) standard.
According to the MPEP, which cites House Rep. 112-98:
“The threshold for initiating an inter partes review is elevated from ‘significant new question of patentability’–a standard that currently allows 95% of all requests to be granted–to a standard requiring petitioners to present information showing that their challenge has a reasonable likelihood of success.”
This indicates that the RLP standard requires a higher level of proof than the SNQ standard, making it more challenging for requesters to initiate a reexamination.
To learn more:
MPEP 2666.02 – Correction Of Patent Drawings (1)
When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:
- New sheets must be submitted for each drawing sheet that is changed or amended.
- If a new drawing sheet contains multiple figures, each figure must be properly identified according to 37 CFR 1.530(d)(3):
“Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
It’s important to note that:
- Changes cannot be made on the original patent drawings.
- It is not sufficient to generally indicate that the entire sheet is amended (e.g., by placing “Amended” in the header of the drawing sheet).
- Each individual figure that has been amended must be clearly marked as “Amended.”
- New figures must be identified as “New.”
- Canceled figures must be surrounded by brackets and labeled “Canceled.”
After proper identification and labeling, the new sheets of drawings should be entered into the reexamination file.
To learn more:
MPEP 2675 – Appellant Brief (1)
The time limits for filing an appellant brief in an inter partes reexamination are specified in 37 CFR 41.66. The brief must be filed by the later of:
- Two months from the date of the examiner’s answer
- The time remaining in the maximum six-month time period set in MPEP § 2662 to file an appeal brief from the date when the notice of appeal was filed
It’s important to note that “The time for filing an appellant brief may not be extended.” (37 CFR 41.66(a))
To learn more:
MPEP 2681 – Board Decision (1)
No, a Patent Trial and Appeal Board (PTAB) decision that includes a new ground of rejection is not considered final. According to MPEP 2681:
A decision which includes a new ground of rejection or a remand will be considered a non-final decision. Until the Board issues a final decision, the parties to the appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under 37 CFR 41.81.
This non-final status allows the patent owner to respond to the new ground of rejection by either:
- Reopening prosecution before the examiner
- Requesting a rehearing by the Board
The decision becomes final only after these procedures have been completed or the time for response has expired.
To learn more:
MPEP 2691 – Notice Of Inter Partes Reexamination Certificate Issuance In Official Gazette (1)
Including the status of each claim in the Official Gazette notice for an inter partes reexamination certificate is significant because it provides a comprehensive overview of the reexamination’s outcome. According to MPEP 2691: “The Official Gazette notice will include […] an indication of the status of each claim after the conclusion of the reexamination proceeding.”
This information is crucial for several reasons:
- It allows patent professionals to quickly assess which claims have been confirmed, amended, or canceled.
- It helps researchers and competitors understand the current scope of patent protection.
- It provides transparency in the reexamination process and its results.
- It assists in updating patent databases and search systems with the most current information.
By including the status of each claim, the Official Gazette notice serves as a valuable resource for anyone interested in the current state of the reexamined patent.
To learn more:
MPEP 2693 – Intervening Rights (1)
Intervening rights in inter partes reexamination are essentially the same as those for reissue patents. The MPEP 2693 clearly states:
“The situation of intervening rights resulting from inter partes reexamination proceedings parallels the intervening rights situation resulting from reissue patents or from ex parte reexamination proceedings. The rights detailed in 35 U.S.C. 252 for reissue apply equally in reexamination and reissue situations.“
This means that the legal principles and protections established for intervening rights in reissue patents are also applicable to patents that have undergone inter partes reexamination.
To learn more:
MPEP 2696 – Uspto Forms To Be Used In Inter Partes Reexamination (1)
The PTOL-2066 form is used for issuing the “Right of Appeal Notice” in inter partes reexamination proceedings. According to MPEP 2696, this form is associated with “37 CFR 1.953”. The Right of Appeal Notice is a crucial document that informs the parties involved in the reexamination of their right to appeal the examiner’s decision. This notice typically follows the Action Closing Prosecution and precedes any potential appeal to the Patent Trial and Appeal Board (PTAB).
To learn more:
Patent Law (9)
When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:
- New sheets must be submitted for each drawing sheet that is changed or amended.
- If a new drawing sheet contains multiple figures, each figure must be properly identified according to 37 CFR 1.530(d)(3):
“Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
It’s important to note that:
- Changes cannot be made on the original patent drawings.
- It is not sufficient to generally indicate that the entire sheet is amended (e.g., by placing “Amended” in the header of the drawing sheet).
- Each individual figure that has been amended must be clearly marked as “Amended.”
- New figures must be identified as “New.”
- Canceled figures must be surrounded by brackets and labeled “Canceled.”
After proper identification and labeling, the new sheets of drawings should be entered into the reexamination file.
To learn more:
In the context of attorney withdrawal from patent proceedings, “reasonable notice” is not strictly defined by a specific time period. According to MPEP 2623:
“‘Reasonable notice’ would allow a reasonable amount of time for the client to seek the services of another practitioner prior to the expiration of any applicable response period.”
This means that the withdrawing attorney or agent should provide sufficient notice to their client before any response deadlines, allowing the client enough time to find and engage new representation. The adequacy of notice may depend on factors such as the complexity of the case and the remaining time before any deadlines.
To learn more:
The time limits for filing an appellant brief in an inter partes reexamination are specified in 37 CFR 41.66. The brief must be filed by the later of:
- Two months from the date of the examiner’s answer
- The time remaining in the maximum six-month time period set in MPEP § 2662 to file an appeal brief from the date when the notice of appeal was filed
It’s important to note that “The time for filing an appellant brief may not be extended.” (37 CFR 41.66(a))
To learn more:
Intervening rights in inter partes reexamination are essentially the same as those for reissue patents. The MPEP 2693 clearly states:
“The situation of intervening rights resulting from inter partes reexamination proceedings parallels the intervening rights situation resulting from reissue patents or from ex parte reexamination proceedings. The rights detailed in 35 U.S.C. 252 for reissue apply equally in reexamination and reissue situations.“
This means that the legal principles and protections established for intervening rights in reissue patents are also applicable to patents that have undergone inter partes reexamination.
To learn more:
The PTOL-2066 form is used for issuing the “Right of Appeal Notice” in inter partes reexamination proceedings. According to MPEP 2696, this form is associated with “37 CFR 1.953”. The Right of Appeal Notice is a crucial document that informs the parties involved in the reexamination of their right to appeal the examiner’s decision. This notice typically follows the Action Closing Prosecution and precedes any potential appeal to the Patent Trial and Appeal Board (PTAB).
To learn more:
There are specific limitations on who can be named as a representative in a power of attorney for inter partes reexamination. The MPEP 2613 refers to 37 CFR 1.32(c), which states:
“A power of attorney may only name as representative the inventors or registered patent practitioners.”
This means that only the following individuals can be named as representatives in a power of attorney for inter partes reexamination:
- Inventors of the patent in question
- Registered patent attorneys
- Registered patent agents
It’s important to note that any attorney or agent representing a requester must be a registered patent practitioner with the USPTO.
To learn more:
No, a Patent Trial and Appeal Board (PTAB) decision that includes a new ground of rejection is not considered final. According to MPEP 2681:
A decision which includes a new ground of rejection or a remand will be considered a non-final decision. Until the Board issues a final decision, the parties to the appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under 37 CFR 41.81.
This non-final status allows the patent owner to respond to the new ground of rejection by either:
- Reopening prosecution before the examiner
- Requesting a rehearing by the Board
The decision becomes final only after these procedures have been completed or the time for response has expired.
To learn more:
Including the status of each claim in the Official Gazette notice for an inter partes reexamination certificate is significant because it provides a comprehensive overview of the reexamination’s outcome. According to MPEP 2691: “The Official Gazette notice will include […] an indication of the status of each claim after the conclusion of the reexamination proceeding.”
This information is crucial for several reasons:
- It allows patent professionals to quickly assess which claims have been confirmed, amended, or canceled.
- It helps researchers and competitors understand the current scope of patent protection.
- It provides transparency in the reexamination process and its results.
- It assists in updating patent databases and search systems with the most current information.
By including the status of each claim, the Official Gazette notice serves as a valuable resource for anyone interested in the current state of the reexamined patent.
To learn more:
The “reasonable likelihood that the requester will prevail” (RLP) standard was introduced for reexaminations filed between September 16, 2011, and September 16, 2012. This standard is considered more stringent than the “substantial new question of patentability” (SNQ) standard.
According to the MPEP, which cites House Rep. 112-98:
“The threshold for initiating an inter partes review is elevated from ‘significant new question of patentability’–a standard that currently allows 95% of all requests to be granted–to a standard requiring petitioners to present information showing that their challenge has a reasonable likelihood of success.”
This indicates that the RLP standard requires a higher level of proof than the SNQ standard, making it more challenging for requesters to initiate a reexamination.
To learn more:
Patent Procedure (9)
When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:
- New sheets must be submitted for each drawing sheet that is changed or amended.
- If a new drawing sheet contains multiple figures, each figure must be properly identified according to 37 CFR 1.530(d)(3):
“Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
It’s important to note that:
- Changes cannot be made on the original patent drawings.
- It is not sufficient to generally indicate that the entire sheet is amended (e.g., by placing “Amended” in the header of the drawing sheet).
- Each individual figure that has been amended must be clearly marked as “Amended.”
- New figures must be identified as “New.”
- Canceled figures must be surrounded by brackets and labeled “Canceled.”
After proper identification and labeling, the new sheets of drawings should be entered into the reexamination file.
To learn more:
In the context of attorney withdrawal from patent proceedings, “reasonable notice” is not strictly defined by a specific time period. According to MPEP 2623:
“‘Reasonable notice’ would allow a reasonable amount of time for the client to seek the services of another practitioner prior to the expiration of any applicable response period.”
This means that the withdrawing attorney or agent should provide sufficient notice to their client before any response deadlines, allowing the client enough time to find and engage new representation. The adequacy of notice may depend on factors such as the complexity of the case and the remaining time before any deadlines.
To learn more:
The time limits for filing an appellant brief in an inter partes reexamination are specified in 37 CFR 41.66. The brief must be filed by the later of:
- Two months from the date of the examiner’s answer
- The time remaining in the maximum six-month time period set in MPEP § 2662 to file an appeal brief from the date when the notice of appeal was filed
It’s important to note that “The time for filing an appellant brief may not be extended.” (37 CFR 41.66(a))
To learn more:
Intervening rights in inter partes reexamination are essentially the same as those for reissue patents. The MPEP 2693 clearly states:
“The situation of intervening rights resulting from inter partes reexamination proceedings parallels the intervening rights situation resulting from reissue patents or from ex parte reexamination proceedings. The rights detailed in 35 U.S.C. 252 for reissue apply equally in reexamination and reissue situations.“
This means that the legal principles and protections established for intervening rights in reissue patents are also applicable to patents that have undergone inter partes reexamination.
To learn more:
The PTOL-2066 form is used for issuing the “Right of Appeal Notice” in inter partes reexamination proceedings. According to MPEP 2696, this form is associated with “37 CFR 1.953”. The Right of Appeal Notice is a crucial document that informs the parties involved in the reexamination of their right to appeal the examiner’s decision. This notice typically follows the Action Closing Prosecution and precedes any potential appeal to the Patent Trial and Appeal Board (PTAB).
To learn more:
There are specific limitations on who can be named as a representative in a power of attorney for inter partes reexamination. The MPEP 2613 refers to 37 CFR 1.32(c), which states:
“A power of attorney may only name as representative the inventors or registered patent practitioners.”
This means that only the following individuals can be named as representatives in a power of attorney for inter partes reexamination:
- Inventors of the patent in question
- Registered patent attorneys
- Registered patent agents
It’s important to note that any attorney or agent representing a requester must be a registered patent practitioner with the USPTO.
To learn more:
No, a Patent Trial and Appeal Board (PTAB) decision that includes a new ground of rejection is not considered final. According to MPEP 2681:
A decision which includes a new ground of rejection or a remand will be considered a non-final decision. Until the Board issues a final decision, the parties to the appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under 37 CFR 41.81.
This non-final status allows the patent owner to respond to the new ground of rejection by either:
- Reopening prosecution before the examiner
- Requesting a rehearing by the Board
The decision becomes final only after these procedures have been completed or the time for response has expired.
To learn more:
Including the status of each claim in the Official Gazette notice for an inter partes reexamination certificate is significant because it provides a comprehensive overview of the reexamination’s outcome. According to MPEP 2691: “The Official Gazette notice will include […] an indication of the status of each claim after the conclusion of the reexamination proceeding.”
This information is crucial for several reasons:
- It allows patent professionals to quickly assess which claims have been confirmed, amended, or canceled.
- It helps researchers and competitors understand the current scope of patent protection.
- It provides transparency in the reexamination process and its results.
- It assists in updating patent databases and search systems with the most current information.
By including the status of each claim, the Official Gazette notice serves as a valuable resource for anyone interested in the current state of the reexamined patent.
To learn more:
The “reasonable likelihood that the requester will prevail” (RLP) standard was introduced for reexaminations filed between September 16, 2011, and September 16, 2012. This standard is considered more stringent than the “substantial new question of patentability” (SNQ) standard.
According to the MPEP, which cites House Rep. 112-98:
“The threshold for initiating an inter partes review is elevated from ‘significant new question of patentability’–a standard that currently allows 95% of all requests to be granted–to a standard requiring petitioners to present information showing that their challenge has a reasonable likelihood of success.”
This indicates that the RLP standard requires a higher level of proof than the SNQ standard, making it more challenging for requesters to initiate a reexamination.
To learn more: