Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 103-Right of Public To Inspect Patent Files and Some Application Files (1)
Information about reexamination proceedings is made available to the public in several ways:
- Announcement in the Official Gazette:
- The filing of each request for reexamination (where the full fee has been paid) is announced
- Reexaminations ordered at the Director’s initiative are also announced
- Public inspection of reexamination files:
- Once scanned into the Image File Wrapper (IFW) system, reexamination files are open to public inspection
- Files can be accessed through Patent Center on the USPTO website
- The entire contents of the reexamination file are viewable, except for non-patent literature
Direct quote: ‘All requests for reexamination for which all the requirements of § 1.510 or § 1.915 have been satisfied will be announced in the Official Gazette. Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette.’ (37 CFR 1.11(c))
Note that a reexamination file is typically not open to inspection until it has been scanned into the IFW system.
MPEP 2200 – Citation Of Prior Art And Ex Parte Reexamination Of Patents (2)
What are the different types of intervening rights in patent reexamination?
There are two types of intervening rights in patent reexamination:
- Absolute intervening rights: These allow continued use or sale of specific products made before the reissue
- Equitable intervening rights: These may be granted by the court for products made after the reissue
As stated in MPEP 2293: “The second paragraph of 35 U.S.C. 252 provides for two separate and distinct defenses to patent infringement under the doctrine of intervening rights:”
1) Absolute intervening rights that provide “a safeguard for the public against infringement for making, using, offering for sale, or importing any specific thing made, purchased, offered for sale, used or imported before the grant of the reissue patent”
2) Equitable intervening rights that allow “the continued manufacture, use, offer for sale, or sale of additional products covered by the reissue patent when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date”
To learn more:
Numbering of new claims in patent reexamination follows these rules:
- Original patent claims retain their numbers, even if canceled.
- New claims are numbered sequentially starting after the last original patent claim number.
- If new claims are canceled, their numbers are not reused for other new claims.
- At the time of the Notice of Intent to Issue Reexamination Certificate (NIRC), remaining new claims are renumbered sequentially following the highest original patent claim number.
The MPEP states: “Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent.” This ensures clarity and consistency in claim numbering throughout the reexamination process.
To learn more:
MPEP 2250 – Amendment By Patent Owner (1)
Numbering of new claims in patent reexamination follows these rules:
- Original patent claims retain their numbers, even if canceled.
- New claims are numbered sequentially starting after the last original patent claim number.
- If new claims are canceled, their numbers are not reused for other new claims.
- At the time of the Notice of Intent to Issue Reexamination Certificate (NIRC), remaining new claims are renumbered sequentially following the highest original patent claim number.
The MPEP states: “Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent.” This ensures clarity and consistency in claim numbering throughout the reexamination process.
To learn more:
MPEP 2293 – Intervening Rights (1)
What are the different types of intervening rights in patent reexamination?
There are two types of intervening rights in patent reexamination:
- Absolute intervening rights: These allow continued use or sale of specific products made before the reissue
- Equitable intervening rights: These may be granted by the court for products made after the reissue
As stated in MPEP 2293: “The second paragraph of 35 U.S.C. 252 provides for two separate and distinct defenses to patent infringement under the doctrine of intervening rights:”
1) Absolute intervening rights that provide “a safeguard for the public against infringement for making, using, offering for sale, or importing any specific thing made, purchased, offered for sale, used or imported before the grant of the reissue patent”
2) Equitable intervening rights that allow “the continued manufacture, use, offer for sale, or sale of additional products covered by the reissue patent when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date”
To learn more:
MPEP 500 – Receipt and Handling of Mail and Papers (1)
The USPTO assigns different series codes to various types of patent applications:
- 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
- 29/: Design applications
- 35/: International design applications
- 60/, 61/, and 62/: Provisional applications
- 90/: Ex parte reexamination proceedings
- 95/: Inter partes reexamination proceedings
- 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings
The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)
MPEP 503 – Application Number and Filing Receipt (1)
The USPTO assigns different series codes to various types of patent applications:
- 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
- 29/: Design applications
- 35/: International design applications
- 60/, 61/, and 62/: Provisional applications
- 90/: Ex parte reexamination proceedings
- 95/: Inter partes reexamination proceedings
- 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings
The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)
Patent Law (4)
What are the different types of intervening rights in patent reexamination?
There are two types of intervening rights in patent reexamination:
- Absolute intervening rights: These allow continued use or sale of specific products made before the reissue
- Equitable intervening rights: These may be granted by the court for products made after the reissue
As stated in MPEP 2293: “The second paragraph of 35 U.S.C. 252 provides for two separate and distinct defenses to patent infringement under the doctrine of intervening rights:”
1) Absolute intervening rights that provide “a safeguard for the public against infringement for making, using, offering for sale, or importing any specific thing made, purchased, offered for sale, used or imported before the grant of the reissue patent”
2) Equitable intervening rights that allow “the continued manufacture, use, offer for sale, or sale of additional products covered by the reissue patent when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date”
To learn more:
Information about reexamination proceedings is made available to the public in several ways:
- Announcement in the Official Gazette:
- The filing of each request for reexamination (where the full fee has been paid) is announced
- Reexaminations ordered at the Director’s initiative are also announced
- Public inspection of reexamination files:
- Once scanned into the Image File Wrapper (IFW) system, reexamination files are open to public inspection
- Files can be accessed through Patent Center on the USPTO website
- The entire contents of the reexamination file are viewable, except for non-patent literature
Direct quote: ‘All requests for reexamination for which all the requirements of § 1.510 or § 1.915 have been satisfied will be announced in the Official Gazette. Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette.’ (37 CFR 1.11(c))
Note that a reexamination file is typically not open to inspection until it has been scanned into the IFW system.
The USPTO assigns different series codes to various types of patent applications:
- 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
- 29/: Design applications
- 35/: International design applications
- 60/, 61/, and 62/: Provisional applications
- 90/: Ex parte reexamination proceedings
- 95/: Inter partes reexamination proceedings
- 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings
The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)
Numbering of new claims in patent reexamination follows these rules:
- Original patent claims retain their numbers, even if canceled.
- New claims are numbered sequentially starting after the last original patent claim number.
- If new claims are canceled, their numbers are not reused for other new claims.
- At the time of the Notice of Intent to Issue Reexamination Certificate (NIRC), remaining new claims are renumbered sequentially following the highest original patent claim number.
The MPEP states: “Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent.” This ensures clarity and consistency in claim numbering throughout the reexamination process.
To learn more:
Patent Procedure (4)
What are the different types of intervening rights in patent reexamination?
There are two types of intervening rights in patent reexamination:
- Absolute intervening rights: These allow continued use or sale of specific products made before the reissue
- Equitable intervening rights: These may be granted by the court for products made after the reissue
As stated in MPEP 2293: “The second paragraph of 35 U.S.C. 252 provides for two separate and distinct defenses to patent infringement under the doctrine of intervening rights:”
1) Absolute intervening rights that provide “a safeguard for the public against infringement for making, using, offering for sale, or importing any specific thing made, purchased, offered for sale, used or imported before the grant of the reissue patent”
2) Equitable intervening rights that allow “the continued manufacture, use, offer for sale, or sale of additional products covered by the reissue patent when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date”
To learn more:
Information about reexamination proceedings is made available to the public in several ways:
- Announcement in the Official Gazette:
- The filing of each request for reexamination (where the full fee has been paid) is announced
- Reexaminations ordered at the Director’s initiative are also announced
- Public inspection of reexamination files:
- Once scanned into the Image File Wrapper (IFW) system, reexamination files are open to public inspection
- Files can be accessed through Patent Center on the USPTO website
- The entire contents of the reexamination file are viewable, except for non-patent literature
Direct quote: ‘All requests for reexamination for which all the requirements of § 1.510 or § 1.915 have been satisfied will be announced in the Official Gazette. Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette.’ (37 CFR 1.11(c))
Note that a reexamination file is typically not open to inspection until it has been scanned into the IFW system.
The USPTO assigns different series codes to various types of patent applications:
- 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
- 29/: Design applications
- 35/: International design applications
- 60/, 61/, and 62/: Provisional applications
- 90/: Ex parte reexamination proceedings
- 95/: Inter partes reexamination proceedings
- 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings
The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)
Numbering of new claims in patent reexamination follows these rules:
- Original patent claims retain their numbers, even if canceled.
- New claims are numbered sequentially starting after the last original patent claim number.
- If new claims are canceled, their numbers are not reused for other new claims.
- At the time of the Notice of Intent to Issue Reexamination Certificate (NIRC), remaining new claims are renumbered sequentially following the highest original patent claim number.
The MPEP states: “Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent.” This ensures clarity and consistency in claim numbering throughout the reexamination process.
To learn more: