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 (4)
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:
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:
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:
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 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 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 (4)
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:
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:
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:
Patent Procedure (4)
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:
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:
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: